Table 1: General overview of the PCT procedure Legend:

Transcription

1 Table 1: General overview of the PCT procedure EPC: European Patent Convention EPO-OJ: EPO Official Journal RO: Receiving Office IB: International Bureau IPER: International Preliminary Examination Report DOF.: date of filing Prel.-Exam.: preliminary Examination SIS: Supplementary International Search SIS- preparing the SIS te: the time scale is not accurate, and only provides a rough idea of the sequence of the relevant events. Also, there are no differences between the events indicated above or beneath the time axis te: the reference to time limits from the priority / filing date means time limits which are computed from the earliest priority date, or from the filing date, where no priority is claimed. Payment of fees [ I.5] Within 1 month from the date of receipt of the application at the RO, the applicant must pay to the RO the following fees: -transmittal fee, -filing fee, -search fee. File translation for the ISA (if appropriate) [ I.3.2] If the application is filed in a language which is accepted by the RO but is not accepted by the ISA, the applicant must supply to the RO within 1 month from the date of receipt of the application at the RO, a translation of the application in a language which is: Copy of priority document [ I.8.2] If priority is claimed, a copy of the priority document must be filed within 16 months from the priority date at the RO or at the IB. However, if the copy is filed at the IB before publication, it is considered filed in time. Alternatively, if the priority document was issued by the RO, the applicant can request the RO within the same16 month period to forward the document to the IB. A fee can be requested by the RO for this service. Correction / Addition of priority [ I.8.5] The applicant can correct or add a priority claim sending a notice to the IB. This must be done within 16 months from the priority date if this does not cause a change in the priority date and, -when this results in a change of the priority date, within the earlier of- 16 months from the original priority date or, 16 months from the new priority date, provided that, whichever period applies, the correction can be filed up to 4 months from the filing date of the PCT application. is the demand filed on or before 19 months? Entry in national phase in certain states [ III.3.3 and IV.1.1] For the few states which have not yet adapted their national law to the new TL of Art.22, the applicant has to enter the national phase within 20 months from the priority / filing date if he has not filed the demand for preliminary examination within 19 months from the priority / filing date. : then the international phase is extended also for these states Early filing of demand for preliminary examination (for certain states only) [ III.3.3] For the few states which have not yet adapted their national law to the new TL of Art.22, the applicant has to file the demand for Preliminary Examination within 19 months from the priority / filing date if he wants to extend the international phase up to 30 months form the priority / filing date in respect of these states. Luxemburg (national) Uganda (national) Tanzania (national) Preliminary examination may start [ III.10.2] If the demand is validly filed, the IPEA may start the examination. However, the examination may not start before the expiry of the later of: -3 months from transmittal of the search report to the applicant and Establishment of IPER [ III.10] The IPEA examines the application and establishes the IPER. A written opinion has always to be issued before the IPER is established. However, if the ISA and the IPEA are the same office, the WO-ISA is considered to be a written opinion and the IPEA is not obliged to issue a further one. Where the IPEA is different from the ISA, it may still accept the WO-ISA as the first written opinion. Depending on whether amendments have been filed, the IPER is based: -on the application as originally filed, or -on amended documents filed under Art.19 PCT, or -on amended documents filed under Art.34 PCT (this includes amendments filed as reply to the WO-ISA). The IPER is normally established within 28 months from the priority date [ III ]. If the EPO is an elected office, it renders accessible the content of the file of the IPEA (this includes the IPER), to any person, on condition that the application is published and the IPER completed [ III.14]. Filing amendments under Art.34 [ III.9.3] The applicant may file amendments to description, claims, drawings of the application, together with the demand and during the course of the examination, until the IPER is established. Entry in national/regional phase [ IV.1] TL to enter in national / regional phase in the elected states applying the "normal " 30 month TL under Art.39(1) PCT. Access to the WO-ISA [ II.10.11] After 30 months from the priority / filing date, the WO-ISA can be rendered available by: IB, ISA, designated (elected ) offices. 30 months from priority /filing date USA Japan China Others... Spain (national) 31 months from priority /filing date EPO United Kingdom (national) Others... Extended period for entering the national/regional phase [ IV.1] Australia Russian Federation TL to enter in national/regional phase in the elected states applying an "extended" (e.g. 31 month) TL under Art.39(1)(b) PCT. Filing priority application [ I.8] The International application may claim priority from one or more applications filed in or for a Paris Convention State, or from one or more applications filed in or for a member of the World Trade Organization. Conditions and effects of a priority claim are regulated by Art.4 of the Paris Convention. Max 12 months from priority date -accepted by the ISA for search, -a language of publication, -language accepted by the RO, unless the application was already in a publication language. Filing date the PCT application [ I.6] The date of filing is established only if the documents filed comply with certain minimum requirements. This means that certain formal requirements must be met and certain essential elements must be filed. Certain essential elements (part which appears to be a description and part which appears to be at least one claim) can be incorporated in the application by reference to a claimed priority. 1 month from filing date File translation for publication (where appropriate) [I.3.3] If the application was not filed in a publication language and was not translated for the ISA, the applicant must file with the RO a translation in a publication language accepted by the RO within 14 months from the priority. 14 months from 16 months from International publication [ II.12] The IB publishes the application promptly 18 months after the priority / filing date. If the search report is ready before the end of the preparations for publication, it is published with the application. Otherwise, it is published separately as soon as it becomes available. If received in time, amendments under Art.19 PCT and any "brief statement" are also published with the application. 18 months from 19 months from priority /filing date Demand for preliminary examination [ III.3] If the applicant intends to file the demand for Preliminary Examination, he must file the demand within the later of: -3 months from the date of transmission of Search Report + WO-ISA & 22 months from priority/ filing date is the demand filed in time? Reply to the WO-ISA [ II.10.10] If the applicant files the demand and the WO-ISA is considered as 1st written opinion by the IPEA, then the applicant may file a reply (arguments and/or amendments) to the IPEA within the later of: -3 months from the date of transmission of the SR + WO-ISA & Completion of the Supplementary International Search [ II.15.7] Regardless of whether a demand is filed, if a request for Supplementary International Search was filed, the SIS-ISA must prepare the SIS search report within 28 months from the priority date (R45bis.7(a) PCT). Accordance of a filing date / Corrections / Incorporations [ I.6 & I.7] After the purported PCT application has been filed, the RO checks whether the application meets the minimum requirements for the accordance of a DOF. If the finding is positive, a DOF is accorded. If it is negative, the applicant is invited to provide a correction within a certain period. If the applicant complies with the invitation in due time, the DOF is accorded on the date when the correction is filed. Special provisions allow the incorporation in the application of parts of claims, description or drawing, or the incorporation of the whole description or claim/s by reference to a claimed priority. Check for formal requirements [ I.9] If a DOF is accorded, the RO also checks whether the application contains any formal deficiencies, namely that is properly signed, that it properly identifies the applicant, that it contains a title, an abstract, and that it complies with the prescribed physical requirements. If defects are detected, the applicant is invited to correct them. If the correction is not provided in due time, the application is deemed withdrawn (unless the defect concerns the physical requirements but does not prevent publication). The correction of formal requirements does not however, cause a change in the DOF. Restoration of priority right [ I.8.7] If the application is not filed within the 12 month priority period, restoration can be requested within 2 months of expiry of said 12 month period. This also requires the application to be filed within this same two month period. Remark: this table is provided as annex to the book: P. Watchorn & A. Veronese PCT Procedures and Passage into the European Phase. The references in brackets... refer to the relevant paragraphs of the book. Disclaimer: the authors do not accept any responsibility for the consequences of following the information / tips given in this table. Reference must always be made to the official documents (the PCT, the EPC and their implementing regulations and guidelines). Search report & WO-ISA [ II.9; II.10] A search report and a WO-ISA are prepared by the ISA. The TL for the ISA to prepare the search report and the WO- ISA is the later of : -3 months from receipt of search copy, -9 months from the priority date. In most cases they are ready within 16 months from the priority / filing date. Transmission of search report and WO-ISA to the applicant [ II.9 & II.10] As soon as they are prepared, the search report and the WO-ISA are transmitted to the applicant. This event triggers one of the time limits for the applicant to file the demand for preliminary examination. Request for Supplementary International Search (Optional) [ II.15] The applicant may request within 19 months of the priority date that a SIS is carried out on the application by an ISA authorised to do so. A handling and a search fee must be paid to the IB within 1 month from receipt of the SIS request. Amendments under Art.19 PCT [ [ II.11] After receipt of the search report, the applicant can amend the claims under Art.19 PCT. The amendments must be filed at the IB within the later of: -2 months from the transmittal of the search report, -16 months from the priority date. However, if the amendments arrive at the IB before the end of the technical preparations for publication they are considered filed in time. A brief explanatory statement can be filed with the amendments (Art.19(1) PCT). A letter indicating modifications of claims and, for amendments filed as from their basis in the application as originally filed, must be filed R46.5(b) PCT. If no demand is filed, there will be no International Preliminary Examination by any IPEA Where no demand is filed, no preliminary examination is carried out, and any amendments under Art.19 are not taken into account for preparing the report based on the WO-ISA. Report based on the WO-ISA [ II.10.13] Where no preliminary examination is carried out, then the IB prepares a report on behalf of the ISA. This report, has the same content as the WO-ISA, and is called International preliminary report on patentability (Chapter I of the Patent Co-operation Treaty),. Entry in national / regional phase [ IV.1] TL to enter in national / regional phase in the designated states applying the "normal " 30 month TL of Art.22(1) PCT. 30 months from priority/ filing date USA Japan Extended period for entering the national / regional phase [ IV.1] TL to enter in national / regional phase in the designated states applying an "extended" (e.g. 31 month) TL under Art.22(3) PCT. Spain (national) China Others... Access to the WO-ISA [ II.10.11] 31 months from priority/ filing date After 30 months from the priority / filing, the WO-ISA and the report based on the WO-ISA can be rendered available by: IB, ISA, and the designated offices. The report based on the WO-ISA is communicated by the IB to the designated offices, but not before 30 months from the priority. EPO United Kingdom (national) Australia Russian Federation Others...

2 Table 2: Relevant provisions and time limits relating to PCT Chapter I Legend ; EPC: European Patent Convention PC: Paris Convention IB: International Bureau RO: Receiving Office SIS: Supplementary International Search DOF: date of filing te: this table relates to Chapter I PCT; however, some events occurring at the start of chapter II PCT are also reported (e.g. filing a demand, reply to the WO-ISA). The time scale is not accurate, and only provides a rough idea of the sequence in which the different events take place. Also, there are no differences between the events indicated above or beneath the time axis. Reference to time limits from the priority means time limits which are computed from the earliest priority date, or from the filing date, where no priority is claimed. Remark: this table is provided as annex to the book: P. Watchorn & A. Veronese PCT Procedures and Passage into the European Phase. The references in brackets... refer to the relevant paragraphs of the book. Priority right [ I.8.1] -Art.8(1) PCT: priority can be claimed from one or more applications filed in or for a Paris Convention State, or -R4.10(a) PCT: from one or more applications filed in or for a member of the World Trade Organization. R4.10(d) PCT: any contracting state may decide not to apply R4.10(a) PCT. (The EPO lifted the reservation under R4.10(d) PCT when the EPC-2000 entered in force). Art.8(2)(a) PCT: Conditions and effects of a priority claim are regulated by Art.4 of the Paris Convention. Priority period [ I.8.1] and restoration [ I.8.7] Art.4C(1) PC & R2.4(a) PCT: the period for claiming priority is 12 months from the filing of the first application. R26bis.3(a) PCT: if the 12 month period is not met, restoration can be requested within 2 months of expiry of the 12 month period. Restoration can be requested under the unintentional or the all due care criteria. Some offices (e.g. EPO) accept only the all due care criterion. The priority claim [ I.8.1] R4.1(b)(i) PCT & R4.10(a) PCT: When priority is claimed, the request must indicate: -the date of filing of the priority document, -the filing number of the priority document, -the national office or international organization or receiving office where the priority document was filed. The priority document [ I.8.2] R17.1(a) PCT: copy of the priority document must be filed within 16 months from the priority date at the IB or at the RO; but, if it arrives at the IB later, but before publication, it is deemed received in time. R17.1(b) PCT: if the priority document was issued by the RO, the applicant can request the RO within the same 16 month period to forward the document to the IB. A fee may be due. For cases where digital libraries exist see I.8.2. Priority date Time limits computed from priority [ I.8.3] te: many time limits under the PCT are calculated from the priority date. Art.2(xi)(b) PCT: if more then one priority is claimed, then the time limits calculated from the priority date are calculated from the earliest priority. Art.2(xi)(c) PCT: if no priority is claimed, time limits calculated from the priority start on the filing date. R90bis.3(d) PCT: if the earliest priority is abandoned, any time limit calculated from that priority which has not yet expired is recalculated from the new earliest priority (if any) or from the filing date. Correction / addition of priority claim [ I.8.5] R26bis.1(a) PCT: the applicant can correct or add a priority claim sending a notice to the IB : -within 16 months from the priority date if this does not change the priority date and, -when this results in a change of the priority date, within the earlier of- 16 months from the original priority date or, 16 months from the new priority date, but, the notice of correction can still be filed within 4 months from the filing date of the PCT application. Disclaimer: the authors do not accept any responsibility for the consequences of following the information / tips given in this table. Reference must always be made to the official documents (the PCT, the EPC and their implementing regulations and guidelines). Who can file? [ I.1] Art.9(1) PCT: residents / nationals of a PCT contracting State can file a PCT application (see I.1 for assessment of residence & nationality under the PCT). R18(3) PCT: if there is more than one applicant, at least one of them must have the right to file. Art.27(3) PCT: in respect of some states only the inventor is qualified to file a PCT application (the USA is the only state to use this rule, see I.1.1). Art.11(1) PCT: if the applicant lacks the right to file, the RO does not accord a filing date. Where to file? [ I.2] Art.10 PCT & R19(1)(a) PCT: the application has to be filed at the competent receiving office (RO), which is: -the national office of the country of residence of the applicant, -the national office of the country of which the applicant is national, -the International Bureau (IB). R19.1(b) PCT: other authorities (like the EPO) may have agreements to act as receiving offices for applicants which are residents of national of certain states. R19.4(a) PCT: if an application is filed at a receiving office which is not competent [but at least one applicant is a PCT resident or national], it is considered received on the same day by that receiving office on behalf of the International Bureau as receiving office ( I.2.2). Art.27(8) PCT: the PCT does not preclude the member states from applying national security provisions limiting (for example) the applicant's freedom to file the application abroad or to subject the application to a national security check ( I.2.3). Language of the application [ I.3] Art.3(4) PCT: & R12.1(a) PCT: the application must be filed in a language which is accepted by the receiving office. R157(2) EPC: the EPO as receiving office accepts PCT applications in EN, DE, FR. R19.4(a)(ii) PCT: if the application is filed in a language which the receiving office does not accept, it is considered received on the same day by that receiving office on behalf of the International Bureau as receiving office (the IB accepts any language for filing). R.12.3(a) PCT: & R.12.4(a) PCT: depending on the language used on filing, a translation may be required. Max 12 months from priority date The date of filing (DOF) [ I.6.1] Art.11(1) PCT & R20.2(a) PCT: on receipt of the application, the RO accords a filing date if: the applicant (or at least one of them) has the right to file a PCT application at the RO based on his residence / nationality. [In practice, to have the right to file he needs to be resident / national of any PCT state. If he has this right, but he files at the wrong RO, the application is deemed received on the same date on behalf of the IB (R19.4(a)(i) PCT)]. the application is in the prescribed language [if not in a language prescribed by the RO, the application is deemed received on behalf of the IB on the same date. The IB accepts any language for filing (see R19.4(a)(ii) PCT)]. the application contains the following items: -an indication that it is intended as an international application, -the designation of at least one PCT state [this is now automatic on filing the request], -the name of the applicant [so that he is unambiguously identified], -a part which appears to be a description, -a part which appears to be at least one claim. R4.18 PCT & R20.3 PCT: however, the part which appear to be a description and the part which appears to be at least one claim can be incorporated in the application on the filing date by reference to a claimed priority (see R20 PCT and I.7). Formality checks [ I.9.2] Filing date 1 month from the filing date Art.14(1)(a) PCT: the RO checks whether the application contains any of these defects: i) it is not signed (if there are more applicants, then the signature of one of them is enough to pass the formalities checks R.26.2bis(a) PCT) ii) it does not properly identify the applicant, iii) it does not contain a title, iv) it does not contain an abstract, v) it does not comply with the prescribed physical requirements. Fees due on filing / Refunds /Reductions [ I.5] Art.3(4)(iv) PCT & R27.1(a) PCT: an International application is subject to the payment of the following fees: -transmittal fee (R14 PCT; see I.5.1), -international filing fee (R15 PCT; see I.5.2), -search fee (R16 PCT; see.5.3), R14-16 PCT: these fees must be paid to the RO within 1 month from the date of receipt of the application (by the RO). Refunds: refunds may apply in certain cases ( I.5.1-I.5.3; II.5). Reductions / Waivers: applicants from certain nations may have the fees reduced or waived. Other reductions may apply ( I.5). Translation for the Searching Authority (ISA) [ I.3.2] R12.3 (a) PCT: if the application is filed in a language accepted by the RO but not accepted by the ISA for the search, the applicant must supply to the RO within 1 month from the date of receipt of the application at the RO, a translation of the application into a language which is: -accepted by the ISA for search, -a language of publication, -a language accepted by the RO under R12.1(a), unless the application was already in a publication language. Translation for publication [ I.3.3] R.12.4(a) PCT: if the application was not filed in a publication language and was not translated (for the ISA) under R12.3(a), the applicant must file with the RO a translation in a publication language accepted by the RO within 14 months from the priority. Restoration of priority [ I.8.7] R26bis.3(a) PCT: if the 12 month priority period is not met, restoration can be requested within 2 months of expiry of the 12 month period. Preparation of Search Report and WO-ISA [ II.6; II.9; II.10] Art.18(1) PCT & R42.1 PCT: the ISA must prepare the International search report by the later of: -3 months from the receipt of the search copy or, -9 months from the priority date. R43bis.1(a): the ISA prepares the WO-ISA at the same time as it drafts the search report. (If the entire priority year is claimed, this is usually within 16 months from the priority). 14 months from priority date Filing of copy of the priority document [ I.8.2] R17.1(a) PCT: copy of the priority document must be filed within 16 months from the priority date at the IB or at the RO; but, if it arrives at the IB later, but before the publication, it is deemed received in time. R17.1(b) PCT: if the priority document was issued by the RO, the applicant can request the RO within the same16 month period to forward the document to the IB. A fee may be due for this service. For cases where digital libraries exist see I.8.2. Corrections / additions of priority claim [ I.8.5] Application not entitled to a filing date / Corrections / Incorporations [ I.6 and I.7] Art.11(2)(a) PCT & R20.3(a) PCT: if the RO finds that the application is not entitled to a DOF under Art.11(1) PCT, it invites the applicant to correct the deficiencies or to confirm that the description or at least one claim are incorporated by reference to a claimed priority. R20.7 PCT: the TL to provide correction/confirmation is 2 months from the invitation or, in the case where the applicant acts on own motion, 2 months from the date when the first element of the application was filed (see also I and I.6.2.2). R20.4(i): if no correction or confirmation is provided in due time the application is not treated as a PCT application ( I.6.2.1). Art.11(2)(b) PCT: if deficiencies are corrected in due time, a DOF is accorded on the date on which the correction is received by the RO ( I.6.2.1). R20.3(b)(ii) PCT: if the description or claim/s (as a whole) are incorporated by reference under R20.6 (b) PCT, they are considered filed when the first elements of the application were filed and the DOF is that when all requirements of Art.11(1) PCT were met ( I.7.1) R20.5(a-b) PCT: parts of description / claims or drawings can also be incorporated in the application based on the priority document (with no shift of the DOF; see I.7.2). R20.5(c): if these parts or drawings are filed late (and they are not considered incorporated by reference to a claimed priority ) the DOF is that of their receipt (see I.7.2.1). Art.14(4) & R.30.1 PCT: if, within 4 months after accordance of a DOF the RO finds that any of the requirements of Art.11(1) PCT was not complied with, the applications is deemed withdrawn. R29.4(a) PCT: Before this happens, the applicant is invited to comment on the findings (see also I.6.2.2). Correction of formal defects [ I.9.3] Art.14(1)(b) PCT and R26.2 PCT: if the RO finds any of said defects, it invites the applicant to provide correction within 2 months. This period is extendable. (This correction does not cause a shift in the DOF). Art.14(1)(b) PCT: if the applicant does not provide the correction in time, the application is deemed withdrawn. R.26.5 PCT: if the application does not comply with the physical requirements, but is susceptible to be published, then it is not considered withdrawn. Late payment [ I I.5.3] R16bis.1(a) PCT: if any of these fees is not paid in time, then the applicant is invited by the RO to pay it within 1 month from an invitation.the RO may request an additional late payment surcharge under R16bis.1(a) & R16bis.2(a) PCT (the EPO requests it). R16bis.1(d) PCT: if the applicant pays the missing fee(s) before the invitation under R16bis.1(a) PCT is sent, then the fee is deemed paid in time (no surcharge is due). payment / Withdrawal [ I I.5.3] Art.14(3) PCT & R16bis.1(c) PCT: If after being invited, the applicant does not pay the fee(s) on time, then the application is declared withdrawn by the RO. R16bis.1(e) PCT: if the applicant pays the missing fee(s) after this TL expires, but before the application is declared withdrawn, then the fee is deemed paid within the TL of R16bis.1(a) PCT. Failure to file the translation for the ISA [ I I.3.2.2] R12.3(c) PCT: if the applicant has not filed the translation, the RO invites him: -to file it within the period set in R12.3(a) PCT or, -to file it later, but within the later of 1 month from the notification or 2 months from the receipt of the application by the RO. In this case a surcharge is also due under R12.3(e) PCT. R12.3(d) PCT: if the applicant does not file the translation or does not pay the surcharge in time, then the application is deemed withdrawn. The RO Issues a declaration to this effect. R12.3(d) PCT: if the applicant files the translation and pays any late furnishing fee after expiry of the period set, but before the declaration is issued, and before 15 months from the priority, the translation is considered filed in time. Failure to file the translation for publication [ I I.3.3.2] R12.4(c) PCT: if the applicant has not filed the translation within the 14 months, the RO invites him to file it within 16 months from the priority date. A surcharge may be requested by the RO (R12.4(e) PCT). If the translation is filed after the 14 months, but before the RO has issued the invitation, it is deemed filed in time (no surcharge is due). R12.4(d) PCT: if the applicant does not file the translation and/or pay the surcharge within the 16 month period, the application is deemed withdrawn. If the translation is filed and the surcharge is paid late, but before the application is declared withdrawn and before 17 months from the priority, the translation is considered to be received in time. R26bis.1(a) PCT: the applicant can correct or add a priority claim sending a notice to the IB This is to be done: -within 16 months from the priority date if this does not change the priority date and,- -when this results in a change of the priority date, within the earlier of- 16 months from the original priority date or, 16 months from the new priority date, provided that, whichever period applies, the notice of correction can be filed up to 4 months from the filing date of the PCT application. 16 months from priority date Transmittal of SR + WO- ISA [ II.9 & II.10] Art.18(2) & R44.1 PCT: as soon as they are prepared, the search report and the WO-ISA are transmitted to the applicant. Amendments under Art.19 PCT [ II.11] International publication [ II.12] Art.21(1-2) PCT: the application is published by the IB promptly 18 months after the priority date. Art.21(3) & R48.2(a)(v) PCT: if available before the end of the preparations for publication, the search report is published with the application. R48.2(g) PCT: if not yet available, it is published separately as soon as it becomes available. R48(2)(f) PCT: if received in time, amendments under Art.19 PCT and any "brief statement" are also published with the application. Preventing publication [ II.12.4 & V.6] Art.21(5) & R90bis.1(c) PCT: the application is not published if the applicant withdraws it by sending a notice to the IB before the end of the technical preparations for publication (usually 15 days before the scheduled publication date). 18 months from priority date Art.19(1) PCT: after receipt of the search report, the applicant can amend the claims. R46.1 PCT & R46.2 PCT: the amendments must be filed at the IB within the later of: -2 months from the transmittal of the search report to the applicant, -16 months from the priority date. R46.1 PCT: however, if the amendments arrive at the IB before the end of the technical preparations for publication, then they are considered filed in time. Art.19(1) PCT: a brief explanatory statement can be filed with the amendments. R46.5 PCT: a letter indicating modifications of claims and, for amendments filed as from , their basis in the application as originally filed, must be filed. Filing the demand for preliminary examination [ III.3.3] R54bis.1 PCT: if the applicant intends to file the demand for international preliminary examination, he must file this demand within the later of: -3 months from the date of transmission of the search report + WO-ISA to the applicant, and Reply to the WO-ISA [ II.10.10] 19 months from priority date Request for Supplementary International Search [ II.15] R45bis.1(a) PCT: the applicant may request within 19 months of the priority date that a SIS is carried out on the application by an ISA authorised to do so under R45bis.9 PCT ( II.15.1). R45bis.2(a) PCT & R45bis.3(a) PCT: a handling and a search fees must be paid to the IB within 1 month from receipt of the SIS request (R45bis.2(c) PCT & R45bis.3(c) PCT; II ). R43bis.1(a) PCT & R43bis.1(c) PCT: if the applicant files the demand and the WO-ISA is considered as 1st written opinion by the IPEA, then the applicant may file a reply (arguments or amendments) to the ISA within the later of: -3 months from the date of transmission of the SR + WO-ISA to the applicant& It is recommended to file the reply to the WO-ISA when filing the Demand.

3 Table 3: Relevant provisions relating to the International and the Supplementary International Searches International search and state of the art [ II.1] Art.15(1) PCT: each international application is subject to an international search. Art.15(2) PCT: the search is carried out to find the relevant prior art. Art.15(3) PCT: the search is performed on the basis of the claims, with due regard to the description and the drawings. Art.15(4) PCT: the search is made by the ISA, which endeavours to discover as much prior art as possible, consulting the documentation specified in the regulations. R33.1 PCT: for the purpose of the search (Art.15(2) PCT), the prior art comprises any written disclosure (including drawings & illustrations): -which occurred anywhere in the world before the filing date and -which is relevant to determine whether the invention is new and involves inventive step. R PCT and.ii.1 explain that the following are also mentioned in the search report: a) oral disclosures which occurred before the International filing date and which are confirmed by a written disclosure which occurred after the International filing date, and b) patent applications published after the International filing date of the examination being searched, but having an earlier filing date. Art.18(1) PCT: [once the search is completed], the search report is established according to the prescribed regulations (see also II.9). Which ISA is competent [ II.2] Art.16(2) PCT: each RO decides which ISA(s) is/are competent to search applications filed at that RO. R35(1-2) PCT: the RO may specify that more than one ISA is competent. In this case the choice of the ISA can be left to the applicant or can be determined by (e.g.) the technical field of the application or the language of filing ( II.2.1). R35(3) PCT: if the application is filed at the IB, then the ISA is that that would have been competent had the application been filed at the RO which is competent based on the residence / nationality of the applicant. When there are more applicants, this rule may broaden the choice of the possible ISA(s) competent to search that application ( II.2.1). Application not searched due to presence of certain matter [ II.7.1] Art.17(2)(a)(i) PCT: if the ISA considers that the application relates to subject matter which it is not required to search according to the regulations, then it does not prepare the search report. A declaration informing the applicant and the IB is issued. Art.17(2)(b) PCT: if the subject matter in question appears in certain claims only, only the claims affected are excluded from the search. R39.1 PCT subject matter which the ISA is not required to search is: -scientific / mathematical theories, -plant / animal varieties, essential biological processes to produce plants / animals other than microbiological processes, -schemes, rules, methods of doing business or performing mental acts, playing games, -methods of treatment of the human / animal body; diagnostic methods, -presentations of information, -computer programs. Application not searched due to serious deficiencies [ II.7.2] Art.17(2)(a)(ii) PCT: if the ISA considers that the description / claims / drawings fail to comply with the PCT requirements to an extent that no meaningful search can be carried out, then it does not prepare a search report. A declaration informing the applicant and the IB is issued. Art.17(2)(b) PCT: if the subject matter in question appears in certain claims only, only the claims affected are excluded from the search. Application not searched due to defects concerning sequence listings ( II.7.2; II.13.1) R13ter.1(a) PCT & R13ter.1(b) PCT : if the application discloses biological sequence listings, but the application does not contain: - sequence listings which comply with the standards of the Administrative Instructions, and - sequence listings in computer readable form complying with the Administrative Instructions, then the ISA can require the applicant to file such sequence listing/s within a time limit set in the invitation. R13ter.1(c) PCT: the ISA may request a late furnishing fee. The search report [ II.9] te: this table is provided as annex to the book: P. Watchorn & A. Veronese PCT Procedures and Passage into the European Phase. The references in brackets... refer to the relevant paragraphs of the book. te also that the time scale is not accurate, and only provides a rough idea of the sequence of the relevant events. Reference to time limits from the priority means time limits which are computed from the earliest priority date, or from the filing date, where no priority is claimed Publication of the search report [ II.12.1] Art.21(1-2) PCT: the International Bureau publishes the PCT application promptly 18 months after the priority date. Art.21(3) PCT & R48.2(a)(v) PCT: if the search report is available before the end of the preparations for publication of the application (usually 15 days before the scheduled publication date), it is published with the application ( II.12.1) (in this case the publication is identified as an A1 publication). R48(2)(f) PCT: if received in time, amendments under Art.19 PCT and any "brief statement" are also published with the application. te that the WO-ISA is not published with the application. According to R44ter.1(a) PCT the IB and the ISA may not allow access to the WO-ISA before 30 months after the priority date ( II.10.11). Transmittal of search report + WO-ISA to applicant [ II.9 & II.10] Art.18(2) & R44.1 PCT: as soon as they are prepared, the search report and the WO-ISA are transmitted to the applicant. Art.18(1) PCT: the search report is to be prepared in the form prescribed by the regulations. Late publication of the search report) [ II.12.1] R48.2(g) PCT: if the search report is not yet ready at the time of publication it is published separately as soon as it becomes available. (This is what is called an A3 publication). Amendments under Art.19 PCT [ II.11] Art.19(1) PCT: after receipt of the search report, the applicant can amend the claims. R46.1 PCT & R46.2 PCT: the amendments must be filed at the IB within the later of: -2 months from the transmittal of the search report to the applicant, -16 months from the priority date. R46.1 PCT: however, if the amendments arrive at the IB before the end of the technical preparations for publication, then they are considered filed in time. R.46.5 PCT a letter indicating the modifications of the claims and, for amendments filed as from , their basis in the application as originally filed, must be filed together with the amendments. Art.19(1) PCT: a brief explanatory statement can also be filed with the amendments. Filing the demand for preliminary examination [ III.3.3] R54bis.1(a) PCT: if the applicant intends to file a demand for preliminary examination, the demand must be filed within the later of: -3 months from the date of transmission of the Search Report & WO-ISA to the applicant and Reply to the WO-ISA [ II.10.10] EPO-OJ: EPO Official Journal RO: Receiving Office IB: International Bureau WO-ISA: written opinion from the ISA SIS: Supplementary International Search SIS-ISA: ISA performing the SIS DOF: date of filing PCT-AG: PCT applicant s guide R43bis.1(c) PCT: if the applicant files the demand and the WO-ISA is considered as first written opinion by the IPEA, then the applicant may file a reply (arguments or amendments). R43bis.1(c) PCT & R54bis.1(a) PCT: the reply to the ISA must be filed within the later of: -3 months from the date of transmission of the SR & WO-ISA to the applicant and The EPO as ISA [ II.2.2] Art.152 EPC: the EPO acts as ISA for residents / nationals of EPC States. Art.152 EPC: the EPO may also act as ISA for other applicants (nationals or residents in non- EPC states), subject to an agreement between the EPO and the IB (e.g. applicants from USA, Japan). Limitations [ II.2.2.2] Limitations of the EPO competence to act as ISA may apply to applications filed by certain applicants and relating to certain technical fields (e.g. applications from US applicants relating to business methods OJ-EPO, 2009, 206 & OJ 2002, 52). If more ISAs are competent, but a limitation applies, and the applicant chooses an ISA which is excluded by the limitation, the application will be forwarded to another ISA according to the procedure described in II The search fee [ I.5.3 & II.4] R13ter.1(d) PCT: if the applicant does not comply with the invitation in due time the ISA is not required to carry out the search to the extent that the non-compliance prevents the ISA from carrying out a meaningful search. n-unity in search [ II.8] Art.3(4)(iii) PCT: the international application must comply with the requirements of unity. R13 PCT: defines the criteria to establish whether unity is complied with ( II.8.2.1). Art.17(3)(a) PCT: if the ISA considers that the application is non-unitary under R13 PCT, it invites the applicant to pay one or more additional search fees within the prescribed time limit (see II for the procedure and see II for the content of the invitation to pay additional fees). R40.2(b) PCT: the additional search fee/s is/are to be paid to the ISA ( II.8.2.1). R40.1(ii) PCT: the time limit to pay is 1 month from the date of the invitation ( II.8.2). Art.17(3)(a) PCT: the ISA establishes a search report on the first invention mentioned in the claims, and on any other invention for which an additional fee has been paid ( II.8.2.1). R43 PCT: this rule indicates all the items which the search report must contain (e.g. citations of the relevant prior art documents retrieved in the search, classification of the application, title, abstract, language of the report, etc.). Incomplete search or no search [ II.7] Art.17(2)(a) PCT: if the ISA considers that the application: -relates to subject matter which is not required to search, and decides not to search it, or -that the application fails to comply with the prescribed requirements to such an extent that a meaningful search cannot be carried out, then the applicant is notified of this and no search report is established ( II.7.1). Art.17(2)(b) PCT: if any of the situations mentioned in Art17(2)(a) exists in connection to some claims only, the search report indicates this in respect of such claims, whereas for the other claims, the search report is established ( II.7.2). Partial search following non-unity objection [ II.8] Report based on the WO-ISA [ II.10.13] R44bis.1(a) PCT : where no International preliminary examination report has been or is to be issued (i.e. when no demand for preliminary examination is filed), then the IB prepares a report on behalf of the ISA. This report has the same content as the WO-ISA. R44bis.1(b) PCT: The report is called International preliminary report on patentability (Chapter I of the Patent Co-operation Treaty). R44bis.3(a) PCT: If it is prepared in a language which is not an official language of a designated office, this office may request a translation into English. R44bis.3(b) & R44bis.4: the IB is responsible for preparing this translation but the applicant is given the opportunity to make observations on its correctness ( II.10.14). R44bis.2(a) PCT: this report is communicated by the IB to the designated offices, but not before 30 months from the priority date. But, if the applicant requests early passage in regional / national phase, the IB communicates this report to the designated offices upon request of these offices or of the applicant. te: if the demand for preliminary examination is filed, R.44bis.1(a) does not apply, and the IPEA prepares a real preliminary examination report. Art.3(4)(iv) & R.16.1(a) PCT: the ISA may charge a fee to perform the international search. R.16.1(b) PCT: the search fee is to be paid to the RO. R.16.1(f): the search fee is to be paid within 1 month from the filing of the application. (See I.5.3 for late payment of the search fees and for sanctions for late payment / failure to pay). RFees 2(1).2 EPC: the EPO (acting as ISA) charges a search fee when acting as ISA. Refunds of the search fee [ II.5.1; II.5.2] The search fee is refunded: -R16.2(i) PCT: if the application is not accorded a filing date. -R16.2(ii) PCT: if the application is withdrawn or deemed withdrawn before transmittal of the search copy to the ISA. But, EPO-OJ 2007, 617: the EPO is more generous, and refunds the search fee if the application is withdrawn/deemed withdrawn before the search is begun. -R16(2)(iii) PCT: if the application is not treated as a PCT application due to considerations of national security. -R16.3 PCT: if, when performing the International search, the ISA takes into account the results of a previous search carried out on an application claimed as priority. The amount of this refund depends from the degree of overlap of the claimed subject matter. R41.1 PCT, R4.12(i) PCT: this refund must be requested in the request form. R12bis.1(a) PCT: copy / translation of the earlier search results and of the earlier application may also have to be provided for this refund to apply. R41.1 PCT: the ISA is not obliged to take into account search reports drawn up by other ISAs. (e.g. the EPO only takes into account earlier searches performed by itself OJ, 2007, 617). Reductions of the search fee [ I.5.3] OJ 2008, 521: the EPO charges a reduced search fee for applicants of certain low income states listed by the World Bank. Transmittal of the search copy to the ISA R23.1(a) PCT & (R22.1 PCT): the search copy is transmitted by the RO to the ISA promptly after receipt of the application by the RO, where: -a filing date is accorded under Art.11(1) PCT, and -there are no national security checks to be carried out, (and if there are any they have been already made), and -the filing fee and the search fees have been paid, and -no translation under R12.3(a) is required. R23.1(b) PCT: if a translation was filed under R12.3 PCT to the ISA for the search, it is this translation which is sent as search copy to the ISA (but only if the search fee is paid). Disclaimer: the authors do not accept any responsibility for the consequences of following the information / tips given in this table. Reference must always be made to the official documents (the PCT, the EPC and their implementing regulations and guidelines). Once the ISA has received the search copy from the RO it may start the international search. te: the search can be suspended by the ISA if the application relates to nucleotide / aminoacid sequences, and no data carrier containing these sequences in computer readable form has been filed. te: the EPO acting as ISA sends to the applicant the results of the partial search for the first "main invention" mentioned in the claims together with the invitation to pay additional search fees for the other inventions. Once the TL to pay additional search fees has expired, a search is performed on any invention for which additional searching fees have been paid. A final search report covering all the searched inventions is then issued. Protest procedure [ II.8.3] R40.2(c) PCT: the applicant may pay the additional search fee under protest, with a reasoned statement that: -the application is unitary, or. -that the additional fees are excessive. R40.1(ii) PCT: the time limit to pay additional search fee/s and for filing the protest is one month from the date of invitation by the ISA to pay additional search fees. R40.2(e) PCT: the ISA may ask for a fee for the examination of the protest. Rfees 2(1).21 EPC: the EPO charges a protest fee under R40.2(e) PCT. R.40.1(iii) PCT: the time limit for the payment of the protest fee is one month from the date of invitation by the ISA to pay additional search fees. R40.2(c) PCT: the protest is examined by a review body within the ISA. R40.2(d) PCT: the review body can include the examiner who made the decision under protest, but cannot be limited to this person. OJ S. 3/07, N.1: the review body at the EPO-ISA is composed of three members; usually these are: the examiner who sent the invitation to pay additional search fees, his director and an examiner with unity expertise. R40.2(c) PCT: the review body examines the case and refunds any additional search fee which was paid to the extent that the protest was justified. This means that the review body may decide that: a) the application is unitary (then any additional fee paid is refunded), b) the application is non-unitary but the number of additional fees requested by the ISA was excessive (then any additional fee in excess is refunded). c) the application is not-unitary and the number of fees requested was not excessive (then no refund is granted). R40.2(e): if the review body finds that the protest was entirely justified, then also the protest fee is refunded (together with all additional fees paid). Time limit to prepare the Search Report [ II.6] Art.18(1) PCT & R42.1 PCT: the time limit (for the ISA) to prepare the search report (or the declaration replacing it under Art.17(2)(a)) is the later of: -3 months from the receipt of the search copy and, -9 months from the priority date. Art.17(3)(a) PCT: if the ISA found that the application lacks unity, it prepares a search report only in respect of the first invention mentioned in the claims (main invention) and in respect of any other invention for which additional search fees were paid ( II.8). The Written Opinion of the ISA (WO-ISA) [ II.10] R43bis.1(a) PCT: the ISA prepares a written opinion (WO-ISA) on the International application at the same time as it drafts the International search report. This opinion is on: (i) novelty, inventive step, industrial application of the invention ( II.10.3), (ii) compliance with the requirements of the PCT in as far as these are checked by the ISA (the WO-ISA may, for example, contain observations on formal defects of the application or observations on the clarity, support and disclosure of the invention; see II.10.9). R43bis.1(b) indicates, referring to other regulations, that the criteria which the ISA has to apply when establishing the WO-ISA are the same which the IPEA applies during preliminary examination. In particular cases no WO-ISA is prepared (See II.10.2). Assumption of validity of priority [ II.10.7] Often, when the WO-ISA is established, the 16 month TL for filing the copy of the priority document has not yet expired. If this copy is not yet available to the ISA, the WO-ISA is established on the assumption that the priority is valid (see.ii.10.7 and PCT S & E guidelines 11.05). Optional Request for Supplementary International Search (SIS) [ II.15] R45bis.1(a-b) PCT : the applicant may request the IB within 19 months of the priority date that a SIS is carried out on the application by an ISA (or by more than one ISA) authorised to do so under R45bis.9 PCT ( II.15.1). R45bis.9(a) PCT: an ISA may act as ISA-SIS if this is allowed for in an agreement between the ISA and the IB. Limitation of competence may apply based on the subject matter to be searched and the number of SIS-searches to be performed by that ISA. R45bis.9(b) PCT: however, an ISA may not act as SIS-ISA if it has carried out the main International Search under Art.16(1) PCT (i.e. it must be a different ISA). Subject to the restrictions under R45bis.9 PCT, the applicant may choose any ISA to perform a SIS. R45bis.2(a), R45bis.3(a), R45bis.2(c) & R45bis.3(c) PCT: a handling and a search fee must be paid to the IB within 1 month from receipt of the SIS request ( II ). Translations of the WO-ISA [ II.10.12] R44bis.3(d) & R72.2bis PCT: the designated / elected offices may request a translation of the WO-ISA into English where the applicant has requested early entry in the regional / national phase (since the report based on the WO-ISA, and possibly its translation, are not yet ready in these cases). The translation is prepared under the responsibility of the IB R44bis.4 & R72.3 PCT: the applicant may file comments on this translation. Confidentiality of the WO-ISA and other documents [ II.10.11] R44ter.1(a) PCT: except with the authorisation of the applicant, the IB and the ISA may not allow access by any person or authority before 30 months after the priority date to: -the WO-ISA, any translation of the WO-ISA, and any observations from the applicant on that translation, -the report based on the WO-ISA, the translation of the report based on the WO-ISA and any observations from the applicant on that translation. te: an earlier access to these documents can be possible where the applicant requests early passage in the regional / national phase. Availability after 30 months [ II.10.11] PCT S&E Guidelines 2.18 : The IB, the ISA and the designated offices (which receive a copy of the documents from the IB under R44bis.2(a) ), can make the following documents available to the public after 30 months from the priority: -the WO-ISA, -the report based on the WO-ISA -the translation of WO-ISA -the translation of report based on WO-ISA. The EPO as designated office renders the WO-ISA available to the public 30 months after the priority date. Preparation of the Supplementary International Search Report [ II.15.7] R45bis.5(b) PCT: the SIS search is carried out on the application as filed (or a translation thereof). PCT AG I, : amendments made under Art.19 PCT are not taken into account ( II.15.5). R45bis.5(c) PCT & Art.17(2) PCT: limitations of the SIS may apply if the application concerns subject matter that the SIS-ISA is not obliged to search or if the application is so deficient that a meaningful search cannot be performed. A declaration is issued in these cases (see II.15.8). R45bis.6(a) PCT: if the SIS-ISA finds that the application is not unitary, it searches only the first invention mentioned in the claims and informs the applicant giving the reasons. additional fees are requested and no additional searches are performed on the other inventions ( II.15.9). R45bis.7(a) PCT: the SIS must be prepared within 28 months from the priority date ( II.15.7). R45bis.7(c) PCT: provisions on form & content of the main search report apply to the SIS ( II.15.7), (e.g. document cited, classification; but, documents cited in the main search do no need to be recited). R.45bis.8(a) PCT & PCT-AG I, : the SIS-ISA transmits the SIS to the IB. The IB includes the SIS in the main International search report and transmits it to the designated offices and to the IPEA; the IPEA takes the SIS into account if it receives it in time before drafting any WO or IPER; II PCT-AG-I, : the SIS is not published but is rendered available by the IB under Patentscope. Events taking place during the search procedure Events taking place after the search report is issued (But, the SIS-request can be filed, and the SIS be issued even before this)

4 Table 4: Procedure before the International Preliminary Examination Authority (IPEA) EPC: European Patent Convention PCT-AG: PCT applicant's guide PCT S&E Guidelines: PCT Search and Examination Guidelines IB: International Bureau RO: Receiving Office WO: written opinion (of the IPEA) IPER: International Preliminary Examination Report te: this table is provided as annex to the book: P. Watchorn & A. Veronese PCT Procedures and Passage into the European Phase. The references in brackets... refer to the relevant paragraphs of the book. te that the time scale is not accurate, and only provides a rough idea of the sequence of the relevant events. Reference to time limits from the priority / filing date mean time limits which are computed from the earliest priority date, or from the filing date, where no priority is claimed. Early filing of demand (for certain states only) ( III.3.3) For the few states which have not yet adapted their national law to the new TL of Art.22 PCT, the applicant has to file the demand within 19 months from the priority / filing date if he wants to extend the international phase up to 30 months form the priority / filing date in respect of these states. Search report + WO-ISA prepared and transmitted to the applicant ( II.9 & II.10) Art.18(2) & R44.1 PCT: as soon as they are prepared, the search report and the WO-ISA are transmitted to the applicant. This triggers one of the two time limits to file the demand for preliminary examination. The TL for the ISA to prepare the search report is the later of: -3 months from receipt of search copy, -9 months from the priority date. Usually the ISA prepares the search report within 16 months from the priority date. 16 months from When to file the demand for preliminary examination ( III.3.3) R54bis.1 PCT: the demand for preliminary examination must filed within the later of: -3 months from the date of transmission of Search Report + WO-ISA, & -22 months from the filing / priority date. rmally the 22 months TL applies. The other TL applies only if the search report is transmitted very late. R54bis.1(b) PCT: any demand made after the prescribed date is considered not to have been made. The IPEA makes a declaration to this effect. 19 months from priority /filing date 22 months from If no demand is filed, there will be no International Preliminary examination by any IPEA is the demand filed? When can the IPEA start examination ( III.10.2) R69.1(a) PCT & R54bis.1(a) PCT: the IPEA cannot start the preliminary examination before the later of: -3 months from the transmittal of the search report + WO-ISA to the applicant and, This unless the applicant requests an earlier start. This is also subject to the exceptions of R69.1(b-e) For more information on these exceptions see III Start of examination at search stage ( III.10.2) R69.1(b-e) PCT: this regulation allows an ISA which also acts as IPEA, to start the examination early (at the search stage) if some conditions are met. In particular: -the demand must already have been filed, -no postponement of the examination has been requested, -any amendment mentioned in the demand must be available. For more information on this topic see III Report based on the WO-ISA [ II.10.13] R44bis.1(a) & R44bis.1(b) PCT : where no International preliminary examination report has been or is to be issued, then the IB prepares a report on behalf of the ISA. This report has the same content as the WO-ISA and is called International preliminary report on patentability (Chapter I of the Patent Co-operation Treaty). For translations of this report see II te: if the demand for preliminary examination is filed, R.44bis.1(a) does not apply and the IPEA prepares a real preliminary examination report. R44bis.2(a) PCT: this report is communicated by the IB to the designated offices, but not before 30 months from the priority date. However, if the applicant requests early passage in regional / national phase, the IB communicates this report to the designated offices upon request of these offices or of the applicant. does the IPEA accept the WO- ISA of a different ISA as 1st WO? is the IPEA the same office as the ISA? WO-ISA considered as first WO of the IPEA ( III ) R66.1bis(a) PCT: the WO-ISA is considered as the first written opinion (WO) of the ISA. This means that in this case the IPEA may issue the IPER without the need to issue its own WO. The IPEA has however the discretion to issue another WO. Where the WO-ISA is considered the 1st written opinion by the IPEA, the applicant may file at the IPEA a reply to the WO-ISA in order to have arguments and / or amendments considered in the IPER. The reply must be filed within the TL for filing the Demand cf R54bis PCT (R43bis.1(c) PCT) in order to be considered by the IPEA; i.e. it has to be filed in due time before the IPER is established ( II.10.10). Issue of a written opinion (WO) ( III ) Art.34(2)(c) & R66.1bis(b) PCT: any IPEA may notify the IB that it will not accept the WO-ISA of a different ISA as a WO. In such cases the IPEA is obliged by Art.34(2)(c) to issue its own WO. before the IPER is established. (For the content of the WO see III ) Further written opinion/s ( III.10.5) R66.4(a) PCT: if the IPEA wishes so, it may issue a further WO, but this is at the discretion of the IPEA. (For the content of the WO see III ) yes does the IPEA issue a further written opinion? Reply to written opinion ( III.10.4) Art.34(2)(d) PCT & R66.3(a) PCT: the applicant may reply to the WO filing amendments / arguments within the TL set in the WO under R66.2(d) PCT. R66.4bis PCT: late filed replies can be ignored for drafting the report. Establishment of the IPER ( III.10.7) Art.35(1) PCT: the International Preliminary Examination Report is established in the prescribed form and is produced within the prescribed time limit. Form & content of IPER ( III III.7.3) Art.35(1-2) PCT: the IPER must be in the prescribed form. In particular the report must contain a statement indicating whether the claims comply with the criteria of novelty / inventive step and industrial applicability ( III.7.1). Art.35(2) & R70.6(a) PCT: explanations on the findings must be given and the relevant prior art cited ( III.7.2). Art.35(2) PCT, R70.12 & R66(2)(iii) PCT: other defects of the application (e.g. relating to clarity and/or support of the claims) may also be mentioned in the IPER ( III ). Basis of IPER ( III.9) R66.1(a-d) PCT: depending on whether amendments have been filed, the IPER is based on the application as originally filed, or on amended documents filed under Art.19 PCT, or filed under Art.34 PCT (also as a reply to the WO-ISA). Amended documents on which the IPER is based are annexed to the IPER (see III III.9.3). Documents considered ( III & II.15.11) The IPEA takes into account documents cited in the search report and in the SIS (if the SIS-search report is drafted and is received it in time before drafting the IPER). Limited / partial IPER ( III , III ) Art.35(3)(a-b), Art.34(4)(a-b), R66.1(e), R70.2(d), R70.12(iii) PCT: if the IPEA finds that the application: -relates to subject matter which it is not obliged to examine, or -contains deficiencies such that no meaningful opinion can be formed, or -relates to inventions which have not been searched, (for example as result of a non-unity objection raised in search or because the ISA considered that no meaningful search was possible), then no opinion will be issued for the part of the application concerned. Time limit for preparation of the IPER ( III ) R69.2 PCT: the IPER must be prepared by the IPEA by the later of the following dates: -28 months from the priority / filing date, -6 months from the date on which examination can start under R.69.1 PCT, -6 months after receipt of the translation under R55.2 PCT te: the 28 month TL normally applies. 28 months from IPER forwarded to applicant, IB & elected offices / Translation [ III & III.7.12] Art.36(1) PCT: the IPER is transmitted with its annexes to the applicant and to the IB. Art.36(3)(a): the IPER & translation (if required) & annexes (in original language) are communicated by the IB to the elected offices (See III ). R72.1(a) if the report is not in a language of a certain elected state, that state may require an English translation from the IB. (See III ). Confidentiality of the file of the IPER ( III.14) Art.38(1) PCT: neither the IB, nor the IPEA may allow access to the file of the IPEA, except with the consent of the applicant to: -any person and -any authority (except for the elected offices once the IPER has been established). Access via elected offices R94.3 PCT: if the national law of any elected office (this includes treaties such as the EPC) allows access by third parties to the file of a national application, then that office may also allow access to the documents relating to the PCT application. This includes also the file of the IPEA. EPO Guidelines, E-IX 6.4: the EPO as elected office allows access to the IPEA file of published applications if: -they were filed on or after , and -the IPER is completed. But, for applications filed before the applicant must have completed 1 act for entry into the EP regional phase (OJ 2003, 382 and OJ 1999, 329). Who can file the demand for Preliminary Examination ( III.1) Art.31(2)(a)PCT: the demand for preliminary examination can be filed by any applicant who is: -resident / national of a PCT State bound by chapter II PCT, and -whose application was filed at a RO of or acting for such state,. te: since all PCT states are currently bound to chapter II PCT, any applicant who is a national resident of a PCT state can file a demand for preliminary examination. R54.2 PCT: if there are two or more applicants, at least one of them must be resident / national of a PCT state bound by chapter II PCT. R54.4 PCT: if no applicant has the right to file it, the demand is deemed not received. Where to file the demand / Which IPEA is competent ( III.2, III.3.1) Art.31(6)(a) PCT: the demand must be filed at the competent IPEA ( II.3.1 ). Art.32(2) PCT: the RO specifies which IPEA/s is/are competent for International Applications filed at that RO ( II.2). R59.1(b) PCT, R35.3(a) PCT & R19 PCT: if the application was filed at the IB as RO, the competent IPEA is that which would have been competent, had the application been filed at the receiving office of: -the state of residence of the applicant, -the state of nationality of the applicant, -other offices (resulting from agreements allowing filing at other offices, e.g. EPO). Reply to the WO-ISA ( II.10.10) R43bis.1(c) PCT: if the applicant files the demand and the WO-ISA is considered the 1st written opinion by the IPEA, then the applicant may file a reply (arguments and/or amendments) to the IPEA by the later of: -3 months from the date when the SR + WO-ISA were transmitted to the applicant, and te: The applicant has to reply in time, if he wants to be sure that his reply will be considered by the IPEA before the IPER is established. Filing amendments under Art.34 ( III.9 & III.9.3) Art.34(2)(b) PCT: the applicant may file amendments to the description, claims, drawings of the application before the establishment of the IPER. (i.e. during the entire examination procedure). The amendments may not extend beyond the content of the application as originally filed. R66.8(a-c) PCT & R46.5 PCT: a letter indicating the modifications of the claims and, for amendments filed as from , their basis in the application as originally filed, must be filed with the amendments. R66.1(b) PCT: amendments under Art.34 PCT can be filed together with the demand or later, until the IPER is established. R66.4bis PCT: amendments or arguments filed after the IPEA has started to draw up a written opinion or the IPER, may be disregarded by the IPEA for the preparation of that written opinion or the IPER. Substantive issues in preliminary examination ( III.8.1) Art.33(1) PCT: the objective of the preliminary examination is to give a preliminary non-binding opinion on whether the claimed invention: -is novel, -involves an inventive step, -is industrially applicable. Art.33(2) PCT: the invention is novel if it is not anticipated by the state of the art, as defined in the regulations. Art.33(3) PCT: the invention involves an inventive step if it is not obvious to the skilled person at the relevant date. Art.33(4) PCT: an invention is considered industrially applicable when it can be used in any kind of industry (industry in its broadest sense). Art.34(5) PCT: the PCT contracting states can apply different criteria in deciding whether the invention is patentable or not. Relevant date for assessing the prior art ( III.8.2) R64.1(b) & R65.2 PCT: the relevant date used to determine the prior art to assess novelty and inventive step is: -the international filing date, or -the priority date, if the application validly claims priority. The prior art ( III.8.2) Art.33(2) & R64.1(a) PCT: the prior art for the preliminary examination is everything made available to the public anywhere in the world by means of a written disclosure, including drawings and illustrations, before the relevant date. te: for the purpose of Prelim-Examin. only written disclosures count as prior art. n-written disclosures (e.g. oral disclosures and prior uses) are not considered unless confirmed by a written disclosure. See III.8.2 for non-written disclosures and for patent documents published after the relevant date but having an earlier filing date. te: the IPEA takes into account documents cited in the search report and in the SIS (if the SIS-search report is drafted and is received it in time before drafting the IPER - III & II.15.11). R59.1(a-b) & R.35.2(a) PCT: where more than one IPEA is competent the applicant may have a choice among different IPEAs ( II.2). However there may be restrictions limiting the choice of the applicant. These limitations may depend on the residency / nationality of the applicant and/or on the technical field of the application (for limitations applied by EPO as IPEA see III.2.3), and/or on the language of the application (e.g. JPTO). This means that the applicant must check which IPEA/s is /are competent and whether he has a choice. This depends on the RO where the application was filed. See III ; for the cases where the EPO is the competent IPEA. Form & content of the demand: (See III.3.5 for details) Language of the demand ( III.3.4) R55.1 & R55.2 PCT: the demand must be in the language in which the IPEA carries out the preliminary examination (see III.3.4). Language of the application for preliminary examination ( III.6) To be examined, the different parts of the International application must be in a language accepted by the IPEA. If the application was filed or was published in one of these languages, it will be examined in this language, otherwise a translation has to be filed. However, no translation is required where R55(2)b PCT is applicable, i.e. where a translation was previously supplied for search under R12.3 PCT and the ISA and the IPEA are the same office. Amendments to the application have to be filed in the same language as that of the application itself. If a translation is required and the applicant has not filed it, he is invited to do so. te: the legal basis of the above provisions (R.55.2, R.55.3 and R.66.9 PCT) is discussed in detail in III.6.1 and sub-sections. Disclaimer: the authors do not accept any responsibility for the consequences of following the information / tips given in this table. Reference must always be made to the official documents (the PCT, the EPC and their implementing regulations and guidelines). Prescribed fees ( III.7) Art.31(5) PCT: the demand is subject to the payment of the prescribed fees within the prescribed time limit. Handling fee ( III.7.1) R57.1 PCT: the demand is subject to the payment of the handling fee. This must be paid at the IPEA where the demand is submitted (See III for refunds of this fee). Preliminary examination fee ( III.7.2) R58.1(a-c) PCT: the IPEA may require a preliminary examination fee (the EPO does). The amount is set by the IPEA and must be paid directly to the IPEA (See III.7.2 for refunds of this fee). Time Limit for payment ( III & III.7.2) R57.3(a) PCT & R58.1(b) PCT: handling fee & preliminary examination fees must be paid by the later of: -1 month from the date of filing of the demand, -22 months from the priority / filing date. Late payment ( III.7.3) R58bis.1(a): if the handling & the examination fees are not paid in time, the IPEA invites the applicant to pay them within 1 month from the invitation. A surcharge may be requested (the EPO requests it). R58bis.1(c): if a fee is paid late, but before the IPEA issues the invitation it is considered paid in due time (in this case no surcharge is due). R58bis.1(b) PCT: if a fee and/or any surcharge is not paid in time, the demand is deemed not received. The IPEA declares this. R.58bis.1(d)PCT : if a fee and/or any surcharge, is paid late, but before the IPEA issues the declaration under R58bis.1(b) PCT, it is considered paid in time. n-unity in Preliminary examination ( III ) Art.34(3)(a) PCT: if the IPEA considers that the application lacks unity as set in the regulations, then it may invite the applicant to do the following within the prescribed TL: -restrict the claims to make them unitary, or -pay additional examination fees. R68.1 PCT: the IPEA has the discretion not to issue the above invitation. However, also in this case it must state that the application lacks unity, and indicate why. R68.2 PCT: in the invitation the IPEA should: specify at least one restriction which would satisfy the requirements of unity; give the reasons of the findings & indicate the TL to reply ( III ). R68.3(a) PCT: the IPEA sets the amount of the additional fee to be paid. R158(2) EPC: the EPO charges one whole preliminary examination fee for each additional invention. R68.3(b) PCT: the additional fee is to be paid to the IPEA. Art.34(3)(a) PCT & R68.2 PCT: the applicant must respond to the invitation under Art.34(3)(a) PCT within 1 month from the invitation ( III ). PCT S&E Guidelines 10.77: if the applicant pays additional examination fees, the IPEA examines the inventions in respect of which additional fees were paid. If the claimed matter is restricted and rendered unitary, the IPEA examines that unified matter (provided it was searched - R66.1(e) PCT). Art.34(3)(c) PCT & R68.5 PCT: if no additional fee is paid, the IPER is established on the main invention only. In cases of doubt the main invention is that first mentioned in the claims ( III ). R68.3(c) PCT: the applicant may pay the additional examination fees under protest, with a reasoned statement that the application is fully unitary or that the additional fees are excessive. R68(2) PCT: the TL for filing the protest is the same as for the payment of the additional fees. R68.3(e) PCT: the IPEA may request that a protest fee is paid within 1 month of the invitation to pay additional search fees (the EPO does it (Rfees 2(1).21 EPC). R68.3(c-d) PCT: a review body examines the protest and, if it finds it justified, it orders reimbursement of any fee paid in excess. (For review body at EPO see OJ S.3/07, N.1 & III.12.3). R68.3(e)PCT : if the protest is entirely justified, the protest fee is also reimbursed ( III.12.3). Application not examined ( III & III.13.1 & III.13.2) Limitation due to certain subject matter ( III.7.4 & III.13.1) Art.34(4)(a)(i) PCT, Art.35(3)(a-b) PCT & R70.12(iii) PCT: if the IPEA finds that the application (all, or some claims only) relates to subject matter which it is not obliged to examine, then the application (or the claims concerned), is not subject to examination. The IPER states this fact. Art.34(4)(a)(i) & R67.1 PCT: subject matter which the IPEA is not required to examine relates to scientific /mathematical theories, plant varieties, methods of treatment /diagnosis, computer programs, etc. ( III & R67 PCT). Limitation due to serious deficiencies ( III.13.2 & III ) Art.34(4)(a)(ii) PCT, Art.35(3)(a-b) PCT & R70.12(iii) PCT: if the IPEA finds that the application (all of it, or some claims only) contains deficiencies such that no meaningful opinion can be formed, then the application (or the claims concerned), is not subject to examination. The IPER states this fact. Unsearched subject matter is not examined ( III ) R66.1(e) PCT & R70.2(d) PCT: the IPEA is not obliged to examine inventions which have not been searched. If this is the case, then no opinion will be issued for the part of the application concerned. The IPER states this. Missing biological sequence listings ( III.13.2 & III ) R70.12(iv) PCT: if nucleotide and/or aminoacid sequences are missing in such a form that a meaningful opinion cannot be formed, then this is noted in the IPER.

5 Table 5a: Procedure before the EPO acting as ISA in case of non-unity Table 5b: Procedure before the EPO acting as IPEA in case of non-unity The ISA checks whether the application complies with the unity requirements Art.15(1) PCT; [ II.1]: the International application is subject to an International Search by the International Searching Authority (the ISA ). The documents retrieved during the search are cited in the search report according to Art.18(1) & R43.5 PCT; [ II.9]. When performing the search the ISA checks whether the application meets the requirements of unity of invention according to Art.3(4)(iii) & R13 PCT; [ II.8.1]. Art.3(4)(iii) PCT & R13 PCT; [ II.8.1]: the international application must relate to one invention only, or to a group of inventions linked to form a single inventive concept. The IPEA checks whether the application complies with the unity requirements Art.31(1) PCT: on demand of the applicant the International application is subject to an International Preliminary Examination by the International Preliminary Examination Authority (the IPEA ). At the end of the examination the IPEA issues an International Preliminary Examination Report (the IPER, see III.1). Art.34(3)(a) PCT: the IPEA also checks whether the International application meets the requirements of unity of invention according to Art.3(4)(iii) & R13 PCT; [See III.12]. Art.3(4)(iii) PCT & R13 PCT; the international application must relate to one invention only, or to a group of inventions linked to form a single inventive concept [see II.8.1 for substantive issues in non-unity]. Entire claimed subject matter searched If the ISA finds that the application meets the requirement of unity, or -that the application is non-unitary but can be completely searched without additional effort (PCT S&E GL 10.65), then the entire claimed subject matter of the application is searched by the ISA (Art.15(1) & Art.15(3) PCT); [ II.1 & II.8.2.1]. R43bis.1(a) PCT & R44.1 PCT: together with the search report, the ISA also prepares a written opinion (WO-ISA) on the application. The search report and the WO-ISA are sent to the applicant [ II.10]. te: where the application was found to be non-unitary, but was nevertheless completely searched by the ISA, this is stated in the search report and in the WO-ISA. The different inventions are also indicated there. Does the ISA find that the application meets the requirements of unity of invention? Does the ISA`s examiner consider that a full search on all claimed inventions can be performed with negligible additional effort? Entire claimed subject matter examined If the IPEA finds that the application: -meets the requirement of unity, or -that the application is non-unitary but can be completely examined without additional effort (R68.1 PCT), then the entire claimed subject matter of the application is examined by the IPEA (Art.31(1) PCT); [ III.1]. R68(1) PCT: where the application was found to be non-unitary, but was nevertheless completely examined by the IPEA, then the written opinion (if any is prepared by the IPEA) and the IPER must indicate that the application is not unitary, and the reasons why. (See also PCT S&E GL 10.76). Does the IPEA find that the application meets the requirements of unity of invention? Does the IPEA`s examiner consider that a full examination on all claimed inventions can be performed with negligible additional effort? WO: written opinion (of the IPEA) IPER: International Preliminary Examination Report PCT S&E GL: PCT Search and Examination Guidelines OJ S. 3/07, N.1: Official Journal of the EPO, Supplement 3/07, N.1 te: the procedures which are described in these tables are the one followed by the EPO acting as ISA and IPEA and are not necessarily followed by other ISAs and IPEAs. te: this table is provided as annex to the book: P. Watchorn & A. Veronese PCT Procedures and Passage into the European Phase. The references in brackets... refer to the relevant paragraphs of the book. Disclaimer: the authors do not accept any responsibility for the consequences of following the information / tips given in this table. Reference must always be made to the official documents (the PCT, the EPC and their implementing regulations and guidelines). Invitation to pay additional examination fees or to render the claimed matter unitary Invitation to pay additional search fees Art.17(3)(a) PCT; [ II ]: if the EPO-ISA finds that the application does not meet the requirement of unity of invention, it invites the applicant to pay additional search fee/s. R40.1(ii) PCT; [ II.8.2.2]: the time limit to pay the additional search fee/s is one month from the date of the invitation. R40.2(a) PCT; [ II.8.2.1]: the amount of the additional search fee/s is set by the ISA. R158(1) EPC: the EPO, when acting as ISA, requests the payment of one whole International search fee for each additional invention (in addition to the first one, which was paid after filing the International application). R40(2)(b) PCT; [ II.8.2.1]: the additional search fee/s is/are to be paid directly to the ISA. R40(2)(c) PCT; [ II.8.3]: the applicant may pay additional fee/s under protest, with a reasoned statement that: the application is unitary or that the fees requested are excessive. Art.17(3)(a) PCT; [ II.8.2.1]: regardless of whether additional fee/s are paid or not, the ISA performs a search on the first invention mentioned in the claims. PCT S&E GL 10.61; [ II.8.2.1]: when issuing the invitation to pay additional fee/s, the ISA may send to the applicant the results of this search on the first invention together with the invitation to pay additional fees under Art.17(3)(a) PCT (the EPO does this). te: see II for form and content of the invitation to pay additional search fees, and for a review of relevant case law from the EPO Board of Appeal. Art.34(3)(a) PCT; [ III ]: if the IPEA finds that the application does not meet the requirement of unity of invention, it may invite the applicant to either: - pay additional examination fee/s, or - restrict the claims in order to render the claimed subject matter unitary. R68(2) PCT; [ III ]: in the invitation the IPEA should give the reasons for the finding of lack of unity, indicate the amount of fees requested, specify at least one way of restriction of the application which would meet the requirements of unity and also invite the applicant to pay any protest fee. R68.2 PCT; [ III ]: the time limit to limit the claims or to pay additional examination fee/s is one month from the date of the invitation. R68.3(a) PCT; [ III ]: the amount of the additional examination fee/s is set by the IPEA. R.158(2) EPC: the EPO acting as IPEA requests the payment of one whole International examination fee for each additional invention (in addition to the first one which was already paid when filing the demand). R68.3(b) PCT; [ III ]: the additional examination fee/s is/are to be paid directly to the IPEA. R68.3(c) PCT; [ III.12.3]: the applicant may pay additional fee/s under protest, with a reasoned statement that: the application is unitary or that the fees requested are excessive. te: see II for form and content of the invitation to pay additional fees, and for a review of relevant case law from the EPO Board of Appeal. Search limited to first invention only Art.17(3)(a) PCT; [ II.8.2.1]: if no additional search fee/s is/are paid, no additional search/es is/are performed by the ISA. The results of the search on the first invention are used to prepare the search report. The ISA also prepares a written opinion (the WO-ISA), limited to such first invention (see R43bis.1(a) PCT & R44.1 PCT; & PCT S&E GL 10.77); [ II & II.10.15]. PCT S&E GL 17.36: the reasons of the lack of unity are also given in the WO- ISA. [ II.10.15]. protest fee, no refund If no protest is filed, then there is no possibility that any of the search fees which have been paid will be refunded, either in the International, or in any following national / regional phase [ II.8.3]. Protest fully justified; full refund R40.2(c) PCT: If the review body finds that the protest is entirely justified, (i.e. that the application meets the requirements of unity of invention and that no additional search fee should have been requested), it refunds all additional search fees paid [ II.8.3]. R40.2(e) PCT: the protest fee is also refunded in this case [ II.8.3]. Full refund One or more additional search fees paid? One or more additional search fees paid under protest? Examination of the protest R40.2(c-d) PCT; [ II.8.3] If any fee is paid under protest, the ISA submits the protest to a review body, which reviews the non-unity objection and the arguments outlined in the applicant's protest. R40.2(d) PCT: the review body can include the examiner who made the decision under protest, but cannot be limited to this person. OJ S. 3/07, N.1: the review body at the EPO-ISA is composed of three members; usually these are: the examiner who sent the invitation to pay additional search fees, his director and an examiner with unity expertise. refund Search for all inventions in respect of which a fee is paid Art.17(3)(a); [ II.8.2.1]: if one or more additional search fees are paid, the ISA performs a search on all inventions in respect of which those fees were paid. A single search report including the citations of all documents retrieved in the search is then issued. A written opinion (WO-ISA) is prepared in respect of each invention for which a fee was paid (R43bis.1(a) PCT & R44.1 PCT; & PCT S&E GL 10.77); [ II & II.10.15]. PCT S&E GL 17.36: the reasons of the lack of unity are also given in the WO-ISA. Additional fee/s paid under protest R40(2)(c) PCT; [ II.8.3]: the applicant may pay additional fee/s under protest, with a reasoned statement that the application is unitary, or that the number of the fees requested is excessive. R40(1)(ii) PCT; [ II.8.3]: the reasoning must be filed within one month from the invitation to pay the additional fees. R40.2(e) PCT; [ II.8.3]: the ISA may request a protest fee. Rfees 2(1).21 EPC: the EPO charges a protest fee. R40.1(iii) PCT; [ II.8.3]: the protest fee is to be paid within the from the invitation to pay additional search fees under Art.17(3)(a) PCT. R40.2(e) PCT; [ II.8.3]: if the fee is not paid, the protest is deemed not filed. Partial refund Protest partially justified; partial refund R40.2(c) PCT: if the review body finds that the application did lack of unity, but also that too many additional search fees were requested (i.e. the protest was justified only in part), then only the fees which were unduly requested are refunded [ II.8.3.2]. R40.2(e) PCT; [ II.8.3]: the protest fee is not refunded in this case. Examination limited to first invention Art.34(3)(c) PCT; [ III ]: if the applicant does not pay any additional examination fee/s and does not limit the claims to one invention only, then the IPEA establishes the IPER on the main invention. In case of doubts, the main invention is the one which is first mentioned in the claims (R68.5 PCT). R68.4 PCT: if the applicant limits the claims, but insufficiently to comply with the requirement of unity, then the IPEA proceeds as in Art.34(3)(c), (i.e. it establishes the report on the main invention only). protest fee, no refund If no protest is filed, then there is no possibility that any of the additional examination fees which have been paid will be refunded, either in the International, or in any following national / regional phase [ II.12.3]. Protest fully justified; full refund R68.3(c) PCT; [ III.12.3]: If the review body finds that the protest is entirely justified, (i.e. that the application meets the requirements of unity of invention and that no additional examination fee should have been requested), it refunds all additional exam. fee/s paid. R68.3(e) PCT; [ III.12.3]: the protest fee is also refunded in this case. fees paid; limitation fees paid; Insufficient limitation Full refund claims limited to comply with unity? AND / OR additional examination fees paid? One or more additional exam. fees paid under protest? Examination of the protest R68.3(c-d) PCT; [ III.12.3]: If any fee is paid under protest, the IPEA submits the protest to a review body, which reviews the non-unity objection and the arguments outlined in the applicant's protest. R68.3(d) PCT: the review body can include the examiner who made the decision under protest, but cannot be limited to this person. OJ S. 3/07, N.1: the review body at the EPO-ISA is composed of three members; usually these are: the examiner who sent the invitation to pay additional examination fees, his director and an examiner with unity expertise. refund Claims limited, and / or Fees paid Partial Refund Claims limited and / or fees paid Limitation: If the claims are limited in such a way that they comply with the requirements of unity, then the IPEA examines the entire subject matter claimed [ III ]. Fees paid; PCT S&E GL 10.77; [ III ]: if one or more additional examination fees are paid, then the IPEA performs a preliminary examination on all inventions in respect of which those fees were paid. (A single IPER is then issued, including an opinion on each of the inventions for which fees were paid). te: the IPEA will however only examine subject matter which was covered by the international search. Unsearched matter is not examined (R66.1(e) PCT and R70.2(d) PCT). Additional fee/s paid under protest R68.3(c) PCT; [III.12.3]: the applicant may pay additional fee/s under protest, with a reasoned statement that the application is unitary, or that the number of the fees requested is excessive. R68.2 PCT; [ III.12.3]: the reasoning of this protest must be filed at IPEA within one month from the invitation for paying the additional fees. R68.3(e) PCT: the IPEA may request a protest fee. Rfees 2(1).21 EPC: the EPO charges a protest fee. R68.2(v) PCT [ III.12.3]: the protest fee is to be paid within the from the invitation to pay additional examination fees under Art.17(3)(a) PCT. R68.3(e) PCT: if the fee is not paid, the protest is deemed withdrawn. Protest partially justified; partial refund R68.3(c) PCT: if the review body finds that the application did lack unity, but also that too many additional examination fees were requested (i.e. the protest was justified only in part), then only the fees which were unduly requested are refunded [ III.12.3]. R68.3(e) PCT; [ III.12.3]: the protest fee is not refunded in this case. Protest not justified; no refund R40.2(c) PCT; [ II.8.3]: if the review body finds that the protest is not justified, no additional search fee paid is refunded. R40.2(e) PCT; [ II.8.3]: the protest fee is also not refunded in this case. Protest not justified; no refund R68.3(c) PCT; [ III.12.3]: if the review body finds that the protest is not justified, no additional examination fee paid is refunded. R68.3(e) PCT; [ II.8.3]: the protest fee is also not refunded in this case.

6 Table 6: Acts and time limits to enter the regional phase before the EPO WTO: World Trade Organisation EP application: European Patent application EP patent: European patent EP Bulletin: European patent bullettin OJ: EPO Official Journal OJ, S.: Supplement to the EPO Official Journal EPC: European Patent Convention EPC State: State member of the European Patent Convention I.B.: International Bureau R.O.: Receiving Office Rfees: Rule Fees A-III, 6.5.1: EPO Guidelines, part A-III, te: The time scale is not to scale, and only provides a rough idea of the sequence in which the different events take place. Also, there are no differences between the events indicated above or beneath the time axis. Remark: This table is provided as annex to the book: A. Veronese & P. Watchorn Procedural law under the EPC The references in brackets... refer to the relevant paragraphs of the book. Disclaimer: The authors do not accept any responsibility for the consequences of following the information / tips given in this table. Reference must always be made to the official documents (the EPC, its implementing regulations, guidelines and any other official text published by the EPO). The PCT time limit [ IV.1.1] Art.22(1) & Art.39(1)(a) PCT: the applicant must enter the national / regional phase within 30 months of the priority / filing date of the International application. Art.22(3) & Art.39(1)(b) PCT: however, the national law of the designated / elected states may set a time limit which expires later than the above 30 month time limit (the EPO applies a longer time limit of 31 months under R.159(1)). The EPO time limit [ IV.1.1] R.159(1) : the time limit to enter the regional phase before the EPO as designated / elected office is 31 months from the priority date (or filing date, if no priority is claimed). Early national processing [ IV.1.2] Art.23(2), R.47(4) PCT & Art.40(2), R.61(2)(d) PCT: on request of the applicant the designated / elected offices may start the processing and the examination of the application at any time. te that in this table, unless otherwise provided, the articles and the rules which are referred to are those of the EPC. te also that the numbering of the Rfees is that entering in force on The symbol * means: for applications entering the regional phase on/after (see IV.8, OJ 2009, 118). The symbol ** means that the procedure applies to applications for which a R161 communication is sent on or after The symbol *** means that the procedure applies to applications for which the search report (with ESOP) is prepared on or after Representation requirements before EPO [ IV.3]: Art.133(1-2) & Euro-PCT Guide 307: any applicant can perform the acts to enter the European regional phase before expiry of the 3 from the priority/filing date without being represented. However, after entry into the regional phase natural or legal persons having neither residence nor principal place of business in an EPC state must be represented by a professional representative to perform any act (other than payment of fees). If one of these persons has missed a time limit for entry into the regional phase, any procedural step for reinstatement must be taken by a representative. Address, nationality, state of residence / principal place of business of all applicants [ IV.11.3]: these must be known to EPO within the 3 of R159(1), otherwise the applicant/s is/are requested to provide them within 2 months (R163(4) ). Furnish a translation of the application in an EPO language (if necessary) [ IV.7.1]; Publication of the translation [ IV.7.5] Art.153(4) & R159(1)(a) : if the PCT application was not published in an EPO language, the applicant must file a translation of the application into one of these languages (EN / FR/ DE), within 31 months of the priority/filing date. The EPO publishes this translation. Specify the documents on which the procedure is to be based [ IV.5.1] R159(1)(b) : the applicant must specify the documents, as originally filed or as amended, on which the granting procedure is to be based within 31 months of the priority / filing date. EPO form 1200: amendment may also be filed when entering the regional phase and later. te: once new R.161(1) EPC will enter in force ( **), if the request indicates that amendments and/or comments not considered in the EP WO-ISA/IPER were filed, there is no obligation to reply to that WO-ISA or IPER under R.161(1) EPC [ IV.6.1]. Pay the filing fee [ IV.8.2] R.159(1)(c) : The applicant must pay the filing fee within 31 months of the priority / filing date. The amount is the same as the EPO filing fee for direct EP applications, Rfees 2(1).1 As from *, page fees are also charged for each page in excess of 35. Pay the designation fees [ IV.8.3] R.159(1)(d) : The applicant must pay the designation fees by the later of: - 31 months of the priority date, or filing date, if no priority is claimed (period c.f. R.159(1)(d)), or - 6 months of the mention of the publication of the International search report (period c.f. R.39(1)) [this applies regardless of whether a supplementary search report is prepared] Rfees 2(1).3: As from Apr *, one flat designation fee is to be paid, which covers the designation of all EPC states. te: for information on the old designation system, where fees could be paid for specific states see [ IV.8.4] Fees for extension states [ IV.8.4]: Extension fees must be paid within the same period as for the designation fees A-III,12.2. If not paid in time they can be paid in a grace period within two months from expiry of the basic period with a 50% surcharge (OJ 2009, 603) Pay the search fee (if a supplementary search is required) [ IV.9.2] Art.153(7) & R.159(1)(e) : If a supplementary search has to be prepared by the EPO (see B-II, 4.3), the applicant must pay a supplementary search fee within 31 months of the priority / fling date. Rfees 2(1).2: The amount is the same as the EPO search fee. Refunds of the search fee may apply (Rfees 9(1-2) and IV.9.4). Reductions may also apply (see IV.9.4 and EPO GL B-II, 4.3). File the request for examination & pay the examination fee [ IV.10] R.159(1)(f) : The applicant must file the request for examination (and pay the examination fee) by the later of : - 31 months of the priority date, or filing date, if no priority is claimed [period under R.159(1)(f), see IV.10.2], and - 6 months after the mention of the publication of the International search report [period under R.70(1), see IV.10.2] [regardless of whether a supplementary search is issued. If one is issued, confirmation of the request is required [R.70(2); IV.10.3] Full or partial refunds of the examination fee may apply (Rfees 11; IV.10.6). Reductions may apply [R.6(3); Rfees 14(1,2), IV Pay the 3rd year renewal fee [ IV.8.8] R.159(1)(g): Pay the renewal fee by the later of: - the "due date" under Art.86(1) & R.51(1), [last day of month containing the 2 nd anniversary of the filing date, see IV.8.8.1] and, - 31 months from the priority / filing date [under R.159(1), see IV.8.8.2]. File the "certificate of exhibition" (non-prejudicial disclosures, where applicable) [ IV.11.1] R.159(1)(h) : Where applicable, the applicant must file the certificate of exhibition (under Art.55(1-2) & R.25) within 31 months of the priority / filing date [mention of it had already to be made on filing the PCT application in the request]. Pay the claim fees (where applicable) [ IV.8.5] R.162(1) & Rfees 2(1).15: If the application documents on which the procedure is based contain more then 15 claims (as from 1 April 2008), a claims fee is to be paid for the 16th and any subsequent claims within 31 months of the priority / filing date. As from Apr *, a two tier system applies to claim fees. If there are more than 15 claims different fees apply to claims and above 51. Designation of the inventor [ IV.11.2] Art.4.1(v) PCT, R.4.1(1)(iv) & R.4.6(a) PCT: The PCT application should identify the inventor (in the request form), but failure to do so has no consequences in respect of states allowing this data to be provided later (e.g. the EPO). If the applicant did not designate the inventor in the international phase, he is requested by the EPO to do this after entering the European phase according to R.163(1). File a copy of the priority document and of the priority number [ IV and IV ] R PCT: If the PCT application claims a priority, a copy of the priority document has to be filed with the I.B. or the R.O. within 16 months of the priority date. If the priority was filed at the R.O., applicants may simply request the R.O. to forward a copy of the priority to the I.B.; R.17.2(a) PCT: If the requirement for filing a copy of the priority was already complied with in the PCT phase, the designated offices (here the EPO) cannot require the applicant to file it again with them. R.17.1(c) PCT: If the copy of the priority document was not filed in the PCT phase, the designated offices (here the EPO) must give the applicant a further chance to file it before considering the priority right lost (before the EPO this is done under R.163(2)). Filing a translation of the priority document [ IV.11.5]: R.53(3) & EPO GL A-III, 6.8: If the priority document is not in an EPO language and the validity of the priority is relevant to determining the patentability of the invention, then the EPO requests the applicant to file a translation or a declaration that the application is an exact translation of the priority within an EPO period. If the translation is not filed in due time any intermediate relevant document is considered to belong to the state of the art. Comply with the sequence listings requirements (where applicable) [ IV.14] Where the application relates to biological sequences, the applicant must supply the EPO a standardised sequence listing in written and electronic format, as prescribed in R.30 (this is the same standard which applies in the PCT, WIPO ST.25). Failure to appoint a representative [ IV.3)]: R.163(5): If, at the expiry of the 31 month period of R.159(1) the requirements with respect to representation under Art.133(2) are not met, the applicant is requested to appoint a professional representative within two months Missing indication of address, nationality, or state of residence / principal place of business of any of the applicants [ IV.11.3] R.163(4): If at the expiry of the 3 of R.159(1) any of these indications is missing for any of the applicants the applicant is invited to provide them within two months. Invitation to reply to WO-ISA, IPER, SIS-report, ESOP [ IV.5.2; IV.6; IV ] R.161(1)**: After entering the EP phase, if there is no supplementary search, the applicant is invited to comment on the WO-ISA, IPER or SIS-report and, if these were negative, he is invited to correct the deficiencies in the application within one month from the notification. In the cases where he is invited to correct deficiencies, if the applicant does not duly reply, (and he is not deemed to have already replied), the application is deemed withdrawn. This sanction can be remedied by requesting further processing. R.161(2)**: For applications where a supplementary search is carried out, the applicant is invited to amend the application within one month from the notification. If it is amended, the application as amended is the basis for the supplementary search under Art.153(7). R.161 (old): the applicant is simply invited to file amendments upon entry in the EP Phase. R.70a(2)*** If a supplementary search is carried out, the applicant is invited to comment on the ESOP, and if negative, is requested to correct any deficiency in the application within the period for confirming the request for examination, otherwise the application is deemed withdrawn. A reply is considered a confirmation of the request for examination (R.70(2)). R.70(2): If the ESOP is positive, there is no need to reply to it, but the request for examination must be confirmed, otherwise the application is deemed withdrawn (R70(3)). Consequences of non-fulfilment of certain requirements R.160(1): If either: - the translation referred to in R.159(1)(a) is not filed in due time [ IV.7.3], or - the filing fee referred to in R.159(1)(c) is not paid in due time [ IV.8.2], or - the designation fee referred to in R.159(1)(d) is not paid in due time [ IV.8.3], or - the search fee referred to in R.159(1)(e) is not paid in due time [ IV.9.3], or - the request for examination referred to in R.159(1)(f) is not filed in due time [ IV.10.5], then the application is deemed withdrawn. R.160(2): the applicant is informed of the loss of rights. R.112(2) applies mutatis mutandis. te: For applications which entered the EP phase before , if the designation of any specific state is not paid, the designation of that state is deemed withdrawn (old R.160(2)* applies). For more information on the old designation system see [ IV.8.3] R70(2): If a supplementary search is performed, the applicant is requested to confirm the request of examination, otherwise the application is deemed withdrawn (R70(3), IV.10.3) [where a reply to the ESOP is required, see note above]. A-III 12.2; [ IV.8.4]: If an extension fee is not paid, the request for extension is deemed withdrawn. A communication informing of this loss of rights is only sent if a loss of a designation also occurred. Only in this case can a request for further processing for failure to pay an extension be filed. If not paid in time they can be paid in a grace period within two months from expiry of the basic period with a 50% surcharge (OJ 2009, 603). Late payment of the renewal fees [ IV.8.8.3] R.51(2) : If the renewal fee is not paid by the due date, it can be paid within 6 months of this date with a surcharge. Rfees2(1).5: The surcharge is 50% of the renewal fee. J4/91: Where the time limit under R.51(1) applies to determine the normal period for payment of renewal fees, then the 6 month period for payment with surcharge expires on the last day of the 6th month after the due date. L5/93: If 3 of R.159(1) applies to determine the normal period for payment of a renewal fee, then the 6 month period for payment of this fee + surcharge is calculated as an aggregate time limit which starts the day after expiry of the 3 and ends on the day 6 months later corresponding to the date of expiry of the 3. Late payment of the claims fees [ IV.8.5] R.162(2): Where a claims fee is not paid in due time, the applicant is invited to pay it within one month of an invitation (no surcharge is required). If within this period a new set of claims is filed, the claim fees are calculated on the basis of the new set of claims. Late designation of the inventor [ IV.11.2] R.163(1) : If the data concerning the inventor in the form prescribed by Art.81 & R.19(1) have not been filed within the 3 of R.159(1), the EPO invites the applicant to designate the inventor within a 2 month period. Late filing of copy of Priority- Document or Number at EPO [ IV ; IV ] R.163(2): If the applicant did not file a copy of the priority document or the priority number within the 3 of R.159(1), then the EPO invites him to file it within two months (if the priority document was already filed in the PCT phase, the applicant cannot be obliged by the EPO to file it again). R.163(2) & R.53(2) & OJ 2009, 236: If the priority document was an EP application, a PCT application filed at the EPO as RO, a JP or Korean patent application or utility model, or a US patent application or provisional patent application subject to the exchange agreement between the EPO and the USPTO, then the applicant does not need to file the document again at EPO (PCT applications filed at the JPTO as RO are no longer included in this list). Invitation to comply with the sequence listing requirements [ IV.14] R.163(3): If the applicant has not filed with the EPO the written and/or the electronic sequence listings in the prescribed form within the 3 of R.159(1), then he is invited to file it/them within 2 months. A late filing fee is also requested (R.30(3)). Failure to provide correction in due time R.163(6): If the deficiencies noted under R.163(4-5) are not corrected in time, then the EP application is refused. Appealing refusal The applicant is informed of the refusal (R.111), and can appeal against it (Art.106). Applicability re-establishment of rights under Art.122 [ IV.17.2] R.136(3): Re-establishment of rights is ruled out in respect of any period for which further processing is available [e.g. R.159/R.163 periods]. E-VIII, 2.2.1: However, re-establishment is applicable to the period for requesting further processing. This means that, if the applicant fails to request further processing in time after a loss of rights ensued under R.160 or R.163, he may request re-establishment of rights according to Art. 122 for missing the time limit for requesting further processing. Renewal fee not paid [ IV.8.8.4] Art.86(1): If the renewal fee is neither paid within the normal time limit nor the additional 6 month period with surcharge the application is deemed withdrawn. J4/92: The loss of rights ensues at the end of the 6 month period. Failure to pay claim fee/s [IV.8.5] R.162(4): if a claims fee is not paid in due time, the claim concerned is deemed to be abandoned Failure to designate the inventor R.163(6): If the inventor is not designated, then the application is refused [ IV.11.2]. Failure to file copy / number of priority document [ IV ] R.163(6): If deficiencies in the priority claim are not corrected in due time, then the priority right is lost. Failure to file sequence listings R.30(3): If the required sequence listing is not filed and/or the late filing fee is not paid on time, then the application is refused [ IV.14]. NOTE: Re-establishment (Art.122) applied to further processing period (Art.121) E-VIII, 2.2.1: Re-establishment is ruled out in respect of any period for which further processing is available (R.136(3)). However, reestablishment is applicable to the period for requesting further processing itself. Thus, reestablishment applies indirectly to all time limits to which further processing applies, but is not directly available as a remedy until the further processing period is also missed. This must be considered in all following cases where further processing is applicable. Further processing is applicable under Art.121 [ IV.16.2; IV.17.1] Art.121 & R.135: If the applicant fails to observe a time limit vis-à-vis the EPO [e.g. under R.159(1) or R.163(4-5)] he may request further processing of the application according to the regulations [i.e. R.135]. If the request is allowed the loss of rights is deemed not to have occurred. R.135: Further processing is requested by doing the following within two months of the date when the loss of rights is notified: - paying the further processing fee and - completing the omitted act [e.g. paying a fee or filing a translation] R.135(2): The R. 159(1) and R.163 periods are not excluded from further processing Rfees 2(1).12: Amount of the further processing fee. Reinstatement under R.49.6 PCT [ IV.16.1] Before the EPO, reinstatement of rights under R.49.6 PCT is possible (only) to remedy losses of rights ensuing for failure to file the translation and to pay the national fee (i.e. the EPO filing fee) in due time. Further processing: Excluded by R.135(2) Re-establishment, Art.122 t excluded Further processing Art.121 applicable: not excluded by R.135(2). Further processing: Art.121 applicable, not excluded by R.135(2). Appealing the refusal The applicant is informed of the refusal (R.111), and can appeal it (Art.106). Further processing: Art.121 is applicable: t excluded by R.135(2) (excluded for Euro-direct - A-III, 6.5.3). Further processing: Art.121 applicable: t excluded by R.135(2) Appealing the refusal The applicant is informed of the refusal (R.111), and can appeal against it (Art.106). Acts to be performed within 31 months of the priority / filing date Acts which may be required to avoid a loss of rights

7 Table 7: Lack of unity passing into the regional phase before EPO EPC: European Patent Convention WO: written opinion (of the IPEA) IPER: International Preliminary Examination Report te: this table is provided as annex to the book: P. Watchorn & A. Veronese PCT Procedures and Passage into the European Phase. The references in brackets... refer to the relevant paragraphs of the book. Disclaimer: the authors do not accept any responsibility for the consequences of following the information / tips given in this table. Reference must always be made to the official documents (the PCT, the EPC and their implementing regulations and guidelines). Supplementary search on entire subject matter If, when performing the European supplementary search the EPO search division finds that the application is unitary, it searches the entire claimed subject matter [ IV.12.1 case (a)]. This is possible even if a non-unity objection was previously raised during the International phase and the application was searched by the ISA only in part. Examining division agrees that the application is unitary IV.12.1 case (a): the examining division normally upholds the opinion of the search division with regard to unity of invention (C III 7.10). In the present case, if it agrees that the application is unitary, then the entire subject matter claimed (which was also searched in the supplementary search) is examined by the examining division. The examining division is responsible for taking the final decision on non-unity (T631/97). Does the EPO examining division uphold the opinion that the application complies with the requirements of unity? te # 1 : when does the EPO carry out a supplementary search Under Art.153(7) EPC, the EPO performs a supplementary search report on all international applications which enter the European regional phase, if the international search or supplementary International search was not performed by the EPO (acting as ISA or SIS-ISA). Furthermore, no supplementary search is performed on applications filed before 01.Jul.2005 where the Swedish, the Spanish or the Austrian patent office performed the international search (acting as ISAs). For more information see also IV.9. te # 2: cases where R63 and / or R62 apply, which also lack non-unity For the exceptional cases where R63 and/or R62 apply (as in force from April 1, 2010), which also lack non-unity, see the EPO Guidelines B VIII 3.4 and B VIII 4.5. Assessing unity of invention under the PCT and under the EPC The legal provisions relating to the assessment of unity of invention which are laid down in the PCT (Art.3(4)(iii) PCT and R13 PCT) are identical to those laid down in the EPC (Art.82 EPC and R.44 EPC): according to both the PCT and the EPC, an application must relate to one invention only, or to a group of inventions linked to form a single inventive concept [see II.8.1 & IV.12]. Although the legal provisions concerning the assessment of unity under the PCT and the EPC are the same, and theoretically there should be no divergences in the non-unity findings by the international and the regional authorities, it happens sometimes that an application which was found non-unitary in the international phase is found to be unitary in the EPO regional phase and vice-versa. Examining division disagrees and finds application non unitary C III 7.11; E IX 5.7; IV.12.1 case (a): however, if during examination the examining division concludes that the application is non-unitary, it may request the applicant to limit the application to one invention only. The applicant may file a divisional application under Art.76 EPC and R36 EPC for any subject matter which is excised from the application (C III and C VI 9.1.2). The examining division is responsible for taking the final decision on non-unity (T631/97). Does the EPO search division consider that the application complies with the requirements of unity of invention? n-unity: supplementary search limited to the first claimed invention only R164(1) EPC; IV.12.1 case (b): if the EPO considers that the application documents which are to serve as the basis for the supplementary search do not meet the requirements of unity of invention, then a supplementary search report shall be drawn up on those parts of the application which relate to the invention, or the group of inventions within the meaning of Art.82 EPC, first mentioned in the claims. B VII, 2.4: the non-unity finding of the Search Division is independent of any previous finding of the ISA. te: with the entry in force of EPC-2000, it is no longer possible to obtain a supplementary search report for more than one invention. This means that no additional search fees are requested and that no invention other than the first one is searched when a supplementary search report is performed (see Euro-PCT Guide 434). te: the supplementary search is based on the latest filed application documents available at the end of the time limit according to R161 EPC [B-II, see IV.9.1.1]. If a lack of unity objection was already raised by the ISA in the international phase and a supplementary search is to be carried out, it is advisable for the applicant to amend the claims in due time and to have the invention on which he wishes the examination to be carried out mentioned first in the claims (see Euro-PCT Guide 439). n-unity: examination based on the only invention covered by the supplementary search R164(2) EPC; E IX, 5.7; IV.12.1 case (b): if the Examining Division finds that:: -the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention, or -protection is sought for an invention not covered by the supplementary search report, then it shall invite the applicant to limit the application to one invention covered by the supplementary search report. Euro-PCT Guide 440: only the invention which was the subject of the supplementary search can be examined in following examination proceedings. G2/92; C VI 9.1.2, C III, 7.10; IV.13: an applicant wishing to have an other [unsearched] invention examined has to file a divisional application. IV.12.1 case (b): Consequently, in examination proceedings the applicant will only be able to pursue the invention first mentioned in the claims when the application was subject to the supplementary search. The subject matter of any other invention can be made object of one or more divisional applications (see IV.13 ). Amendments / arguments filed after the transmission of the search report R137(4) EPC [renumbered to R137(5) EPC as of ]; E-IX, 5.7; IV.12.1 case (b): If after receiving the supplementary search report the applicant files amended claims relating to an invention which differs from any of the originally claimed inventions or groups of inventions and does not combine with these inventions to form a single inventive concept, an objection under R137(4) EPC [renumbered to R137(5) EPC as of ] should be raised in the first communication. Furthermore, it would appear that, if during the following examination proceedings, the Examining Division is convinced, e.g. by arguments from the applicant in reply to the ESOP, that the application is unitary, then an additional search will have to be carried out by the EPO free of charge on the part of the application which appears to be unitary (C VI 8.2) and that the examination will cover this part. Filing divisional applications: Art.22 PCT & 39 PCT; R159(1) EPC; IV.1: The applicant must enter the European regional phase before the EPO as designated / elected office within 31 months from the priority date (or filing date if no priority is claimed. The issue of unity is considered by EPO after entry in the European regional phase. The procedure which is followed by EPO depends on whether or not a non-unity objection was been raised in the International phase, and on whether a supplementary search report is prepared by EPO [see IV.12]. Does the EPO prepare a supplementary search report on the application after entry in the regional phase? (See note # 1) Art.76 EPC: A European divisional application shall be filed directly with the EPO in accordance with the Regulations. It may be filed only in respect of subject-matter which does not extend beyond the content of the earlier [parent] application as filed; in so far as this requirement is complied with, the divisional application shall be deemed to have been filed on the date of filing of the earlier application and shall enjoy any right of priority. R36 EPC: The applicant may file a divisional application relating to any pending earlier European patent application. For more information concerning when an application is considered pending, see the EPO guidelines A IV R36(1) EPC (in force as from , see IV.13 ): the applicant may file a divisional application relating to any pending earlier European patent application, provided that: (a) the divisional application is filed before the expiry of a time limit of 24 months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued, or (b) the divisional application is filed before the expiry of a time limit of 24 months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Art.82 EPC, provided it was raising that specific objection for the first time. Was a non-unity objection raised by the ISA in the International phase? Examining division reconsiders the objection on unity raised by the ISA If a non-unity objection was raised by the ISA in the international phase the examining division reconsiders the non-unity objection issued from the ISA and decides if it agrees with the finding. [ IV.12.2 cases (b-c)]. When deciding on this issue the examining division must take into account any comment on the issue of nonunity filed by the applicant, e.g. in reply to the WO-ISA or IPER. Furthermore, if the applicant has amended the claims before or upon entering the European regional phase, the EPO examining division must decide: -whether the amended claims meet the requirements of unity (the claims could have been limited to one invention only or to less inventions compared to those of the application as originally filed), and -whether the entire subject matter claimed was searched by the ISA during the international search. The procedure will also depend on whether additional fees where paid to the ISA so that more than one invention was subject to the International search. For more information see IV te: the Examining Division may decide to raise a non-unity objection even if the EPO itself acting as ISA and/or IPEA found the application unitary, because the final responsibility for establishing the issue of unity rests with the Examining Division (C-III, 7.10 & T631/97). Conversely, it may also decide that an application which was found non-unitary by the ISA meets the requirements of unity. Does the examining division agree with the ISA that the application is non-unitary?, (ISA opinion maintained) Were all the inventions claimed in the application covered by the search performed by the ISA? Applicant invited to limit application to the only searched invention, (ISA opinion reversed) R164(2) EPC; IV.12.2 case (b): if the Examining Division finds that the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention, or protection is sought for an invention not covered by the International search report, [e.g. the claims were limited to an invention which was not searched in the International phase by the EPO as ISA], then it shall invite the applicant to limit the application to one invention covered by the International search report. C-III, (ii): if a non-unity objection was raised by the ISA and the applicant did not do either of the following: -pay any additional search fees, or -amend the claims so that they are limited to the only searched invention, and the examiner is of the opinion that the non-unity objection raised by the ISA was justified then the first communication is started on the basis of the first and only searched invention. C III ; C VI 9.1.2; IV, 13: a divisional application can be filed under Art.76 EPC and R36 EPC for any subject matter which has been excised. te: under EPC 2000, the procedure under old R112 EPC 1973 is no longer applicable and the EPO does not offer the opportunity to have any invention which was not searched by the ISA searched upon entry in the EPO regional phase. Examining division decides on unity If no non-unity objection was raised by the ISA, the entire subject matter of the application normally has been searched by the ISA. Although the examining division will normally uphold the opinion of the ISA and examine the entire searched claimed subject matter, the division has the power to re-examine the issue of unity in the examination phase. R164(2) EPC; IV.12.2 case (a) : if the examining division finds that: -the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention, or -protection is sought for an invention not covered by the International search report [e.g. the applicant has limited the claims to an invention which was not searched in the International phase by the EPO as ISA], then it shall invite the applicant to limit the application to one invention covered by the International search report [since the International search report covered all inventions, the applicant can choose any of the inventions searched in the PCT, but must then delete all others from the claims]. C III ; C VI 9.1.2; IV.13: the applicant may file a divisional application under Art.76 EPC and R36 EPC for any subject matter which is excised from the application. te: the Examining Division may decide to raise a non-unity objection even if the EPO itself acting as ISA and/or IPEA found the application unitary, because the final responsibility for establishing the issue of unity rests with the Examining Division (C-III, 7.10 & T631/97). Examining division reverses ISA s opinion (unity complied) C III (v); IV.12.2 case (c): if the examining division disagrees with the finding of the ISA, (possibly taking into account arguments filed in reply to the WO-ISA or the IPER) and decides that the application does meet the requirements of unity, then the entire subject matter of the application is subjected to examination. Additional searches In these cases, if part of the application was not searched by the ISA due to the lack of unity objection, the EPO will perform an additional search on the unsearched subject matter. additional fees are requested to the applicant for this search, see B II 4.2(iii); C VI 8.2; IV.12.2 case (c). refunds of fees paid to ISA te that, if the opinion of the ISA is reversed by the Examining Division, any additional search fee paid to the ISA in the international phase cannot be reimbursed by the EPO (R64(2) EPC is not applicable here). The applicant already had the opportunity to challenge the request for additional search fees in the PCT during the prior review and protest procedures according to R40 PCT [see II.8.3 and sub-sections]. Applicant invited to select one of the searched inventions R164(2) EPC; C III (iii); G2/92; IV.12.2 case (b): if the examining division maintains the non-unity objection, and the entire subject matter of the application was searched by the ISA (this is because the applicant paid additional fees or because the ISA searched all inventions without requesting additional fees, or because the applicant excised unsearched inventions, but more than one invention remains), then the applicant is requested to indicate on which invention he wants to prosecute the examination of the application and to delete all other inventions C III ; C VI 9.1.2; IV, 13: a divisional application can be filed under Art.76 EPC and R36 EPC for any subject matter which has been excised. Applicant already limited claims to only searched invention C-III, (i); IV.12.2 case (b): If a non-unity objection was raised by the ISA and the applicant did not pay any additional search fees, but the claims were amended after receipt of the search report, and were limited to cover only the searched invention and the applicant indicated his wish to have these claims examined and the examiner is of the opinion that the non-unity objection raised by the ISA was justified, then the examination is based on these claims. Applicability of R137(4) EPC in examination proceedings R137(4) EPC*; C-III, (iv); IV.12.2 case (b): if the claims are amended and relate to an invention which differs from any of the originally claimed inventions, and does not combine with these inventions to form a single inventive concept, an objection under R137(4) EPC should be raised in the first communication. For more information see IV.12.1, sub-title Applicability of R137(4) EPC*. * [Renumbered to R137(5) EPC as of ]

8 Table 8: Calculation of time limits under the PCT: Preliminary remarks The calculation of a time limit requires the definition of the relevant date triggering the start of the time limit and the computation of the applicable period. The triggering event can be the priority date or the filing date, or the notification of a document requesting the applicant to perform a procedural act within a certain period. Under the PCT, the time limits which are triggered by the delivery of a document from a national office or an International organization, start to run the day after the date born by that document or letter, unless the person concerned proves that the document / letter was posted at later date, or that it was delivered more then seven days later then the date which it bears. In these last cases extensions of the time limits are applicable under R80.6 PCT. In this regard the PCT differs from the EPC, which deems all communications posted by EPO as delivered 10 days after the date of posting, unless the document is received later than these 10 days, in which case the real date of delivery is the one which counts. Time limits calculated in years (R.80.1 PCT); [ V.1.1] Start: the day after the relevant event occurred, Expire: on the relevant subsequent year, on the same day as the relevant event, provided that if the date of the following year does not exist (i.e. 29 February), then the time limit expires the last day of the month (i.e. 28 February). 25 Mar 1992: event triggering a 10 year period 26 Mar 1992: start computation 10 year period Time limits calculated in months (R.80.2 PCT); [ V.1.1] 25 Mar 2002: end of 10 year period Start: the day after the relevant event occurred, Expire: on the relevant subsequent month, on the same day as the relevant event, provided that if that month has no day with that number (e.g. 31 April), then the time limit expires the last day of the month (i.e. 30 April). 11 May 2000: event triggering a 3 month period 12 May 2000: start computation of 3 month period 10 Year period 3 Month period 11 Aug 2000: end of 3 month period End of working day (R.80.7(a-b) PCT); [ V.1.2] R.80.7(a) PCT: a time limit which expires on a particular date expires at the time when the office where the document must be filed, or the fee must be paid is closed for business. R.80.7(b) PCT: any office may extend the time limit under R80.7(a) PCT to expire up to midnight on the relevant day. OJ S. 3/07, A.3: EPO accepts the filing of documents by fax up to midnight of the relevant day. 3 May: event triggering the start of a 1 month period 4 May: start of 1 month period 3 June, midnight: end 1 month period where R.80.7(b) PCT is applicable (e.g. to send a document by fax at EPO) 3 June, end business time in relevant office: expiry 1 month period (R.80.7(a) PCT). Fax filed at EPO at midnight at EPO (OJ S. 3/07, A.3); [ V.1.2] If an International application is filed at EPO by fax at midnight, and -the fax transmission starts before midnight and, and continues after midnight, and -the document received before midnight satisfies the requirement for obtaining a filing date, -then the applicant may request the EPO to accord a filing date to the part of the document received before midnight, provided that he renounces to the part received later. Extension of time limits (R.80.5PCT); [ V.1.3.1] R.80.5 PCT: Where a time limit for paying a fee or filing a document expires on : -a day when that authority is not open to the public for official business, or -a day when ordinary mail is not delivered in the locality where the authority is situated, -where the authority is situated in one or more locality on a day where at least one locality is closed and where the law of that office allows the time limit to expire on a subsequent day, -where the authority is the office of a PCT state, one day which is an official holiday in a part of that state and where the national law allows the time limit to expire on a subsequent day, -then the time limit expires on the next day where none of these situations applies. 3 September: event triggering a 1 month period to file a document at an office 3 October: theoretical end of, but it s Saturday (office closed). Postal delays: late arrival of documents from the applicant (Art.48(1) & R82.1 PCT); [ V ] Art.48(1) PCT: where a time limit is failed due to postal delays / loss in the mail, the time limit is deemed met, subject to the conditions set out in the regulations (here R82.1(a-b) PCT). Late arrival & "Five days rule" R.82.1(a) PCT: any interested party may prove that he has mailed the letter or document five days or more before the expiry of the time limit. This only applies when the letter or document was sent by: -airmail, and was registered with the postal authorities, or -other mail registered with the postal authorities but only if: surface mail normally arrives in more then 2 days, or no air mail is available. R82.1(b): PCT: If a party proves to the satisfaction of the national office or international organisation which is the addressee, that the conditions under R82.1(a) where met, then the delay is excused. Lost in the mail & "Five day rule" R.82.1(b) PCT: if a party proves to the satisfaction of the national office or international organisation to which the letter or document was addressed that: -the letter or document was posted at least five days before the expiry of the time limit, according to the conditions under R82.1(a), and -the party can prove that the item was lost in the mail, and -the party can prove that a replacement is identical to the lost item, - then the replacement can be allowed (and the time limit be deemed met). Evidence required: R82.1(c): PCT: the following evidence must be filed: -evidence of the date of mailing, -the substitute document (in case of loss), -proof that the substitute document or letter is identical to the original (in case of loss). R82.1(c) PCT: the above evidence must be supplied within the following period: -one month after the party has noticed, or should have noticed the delay or loss of the letter or document, but, -not later then 6 months after the expired time limit. Delivery services R82.1(d) PCT: any national office or international organization can apply the provisions of R82.1 PCT to delivery services other then postal authorities. When an office has informed that it accepts the application of R82.1(a) PCT to such delivery services, then it is obliged to do so. 8 February: date on which the applicant mailed the document under the conditions of R82.1(a)PCT -5 days 14 February: expiration date of a time limit set by an international authority for an applicant to file a particular document. 20 February: date on which the document is received at the international authority Time limits calculated in days (R.80.3PCT); [ V.1.1] Start: the day after the relevant event occurred, Expire: on the day on which the last day of the count has been reached. 3 April: event triggering a 30 days period 30 Day period 4 September: start of 4 October, Sunday (Office closed) 5 October: first day where the office is open. End after extension under R.80.5 PCT Had the document been mailed here, (10.02, i.e. less then 5 days before the expiry of the time limit), then R82.1 would not be applicable te: the same example is applicable also to the cases where the document is lost and is not received at all by the International authority Delay If the national authority is satisfied by the evidence provided under R82.1(b), then the delay is excused. 4 April: start computation of 30 days period Local dates for starting time limits (R.80.4(a) PCT); [ V.1.1] R.80.4(a): the date for computing the Start of the time limit is the date in the place where the relevant date occurred. 1 May (17.30 pm Central EU-Time): EPO requests (by fax) to an applicant in Tokyo to file a document to within a. 1 Month period 3 May: end of 30 day period tifications & time limits: late posting / late delivery of documents at the applicant (R80.6 PCT) [ V.1.3.2] Art.47(1) PCT: The details for computing time limits in PCT are governed by the regulations (e.g. R80.6 PCT) Late posting R80.6 PCT: if a time limit starts to run on the day indicated on a document or letter emanating from a national office or International organisation, -and an interested party can prove that it was posted later than the date which it bears, -then the actual date of mailing applies for computing such time limit. 1 May : date borne by a document triggering the start of a 08 May 7 May: actual date of posting of the letter 7 June, end of the 1 month period under R.80.6 PCT Disruption in the mail service (Art.48(1) PCT & R82.2(a) PCT); [ V ] Art.48(1) PCT: where a time limit is failed due to postal delays / loss in the mail, the time limit is deemed met, subject to the conditions set out in the regulations. (Here R82.2(a-b) PCT). R82.2(a) PCT: Any interested party may offer evidence that: -on any of the 10 days before the day of expiry of the failed time limit, -an interruption of the postal services occurred in his place of residence, place of business or where he is staying, and that the interruption was caused by: War / Strike / Revolution / Civil disorder / Natural calamity / other like reason. R82.2(b) PCT: if the party can prove to the satisfaction of the national office or international organization which is the addressee, -that the circumstances in R82.2(a) PCT existed in the specified period, and -the applicant proves that he posted the document within five days after the mail service was resumed, Then the delay in arrival of the item is excused. R82.1(c) applies mutatis mutandis. (i.e. The same conditions laid down in R82.1(c) apply for proving the circumstances of the mail disruption and the actions taken by the applicant). 11 June: expiration of a time limit set by an international authority for an applicant to file a certain document. Had the document been mailed here, (16 June, i.e. more then 5 days after the mail service was resumed), then R82. 2 would not be applicable. +5 days 20 June: date on which the document is received at t he international authority 2 May (... am Tokyo time): the fax is received by the applicant in Tokyo. Local dates for expiry time limits (R.80.4(b) PCT); [ V.1.1] 1 June: end of. i.e. 1 month calculated from 01 May, and not 02 May R.80.4(b) PCT: the date for computing the Expiry of the time limit is the date where the document must be filed or the fee must be paid. 1 May (17.30 pm Central EU-Time): EPO requests (by fax) to an applicant in Tokyo to file a document within a. 1 June at the EPO sites (where the Central EU-Time applies): end of. te: these are not real examples, because notifications triggering a TL may not be sent by fax (R.92.3 PCT, see IV.1.3.2) Late arrival R80.6 PCT: If the applicant can show that a letter or a document arrived more then seven days after the date it bears (regardless when it was posted), then the date of expiry of any time limit starting from the date of that letter or document is shifted forwards by the same number of days the letter took to arrive minus seven. 2 January: date born by a document triggering the start of a 11 January: date of receipt of the letter by the applicant (it took 9 days to arrive) 2 February: "normal" expiry date of the 4 February: end of the 1 month time limit, extended 2 days under R80(6) PCT. (9 days it took to arrive minus 7 days: 2 extra days) Disruption of the postal service (resumed on 10.06) te: this table relates to the computation of time limits under the PCT. Once an application has entered the regional phase before the EPO, the provisions of the EPC are applicable. Although similarities exist between the computation of time limits under the PCT and the EPC, notable differences exist. For example, time limits triggered by notifications are computed differently (see V.1.3.2).te also that the time scale in the examples provided in this table is not accurate and only provides a rough idea of the sequence in which the different events take place. Remark: this table is provided as annex to the book: P. Watchorn & A. Veronese PCT Procedures and Passage into the European Phase. The references in brackets... refer to the relevant paragraphs of the book. Disclaimer: the authors do not accept any responsibility for the consequences of following the information / tips given in this table. Reference must always be made to the official documents (the PCT, the EPC and their implementing regulations and guidelines) June: date on which the applicant mailed t he document under t he conditions of R82.2(a)PCT Delay If the national authority is satisfied by the evidence provided under R82.2(b), then the delay is excused.

9 Table 9: Mandatory reply to the ESOP [ IV ] and to the WO-ISA, IPER or comments accompanying the SIS-search report [ IV.6.1] Before : R161 EPC communication sent, inviting applicant to amend the application (1m time limit). reply to an IPER/WO-ISA or comments accompanying the SIS-search report is necessary within the 1 month R161 EPC time limit. The applicant may reply to the R161 EPC communication, but is not obliged to do so. The EPO was the ISA Did the applicant file a demand? Was the invitation under R161 EPC sent: - before or - on/after On/after Was the EPO the ISA or the SIS-ISA? The EPO was the SIS-ISA START HERE: Does the EPO prepare a supplementary search report? ** Where no IPER was prepared by the EPO***, was the EPO WO-ISA positive (no objections raised)? Where the EPO prepared an IPER, was this positive? [Regardless of whether the WO-ISA was positive] Where the EPO was the SIS-ISA, were the comments accompanying the SIS-search report positive? * Applicant invited under to amend application (no obligation to reply) - 1 month time limit (R161 EPC). Did the applicant waive his right to the communication under R70(2) EPC? EPO prepares the following (based on latest request on file - B-II, 4.3): - supplementary search report - ESOP Supplementary search report & ESOP drawn up & sent to applicant. The EPO prepares the following: - the supplementary search report - a communication cf R70(1)(2) EPC The application lies in the competence of the EPO Examining Division under R10(4) EPC. The applicant must reply to this communication under R70(1)(2) EPC in time, or the application is deemed withdrawn under Art.94(3) EPC. Was the EPO the IPEA which prepared the IPER? (It is possible for the EPO to be the ISA, but not the IPEA) Was the Supplementary Search Report: - Drawn up on/before Drawn up on/after On/before On/after Were amendments filed under Art.19 PCT? Were amendments filed under Art.34 PCT? Was the ESOP: - negative (at least one objection) - positive (no objections) Positive reply to ESOP required [B-XII, 9 Guidelines 2010 Edition] Did the applicant file either or both of the following on entering the European phase and indicate this on Form 1200: - amendments [R159(1)(b) EPC] - arguments Were the Art.19 PCT amendments maintained on entry into the European phase and indicated on Form 1200? Were the Art.34 PCT amendments maintained on entry into the European phase and indicated on Form 1200? Negative The communication under R70(2) EPC is sent to the applicant inviting him to confirm the request for examination he filed on entry into the European phase. The EPO sets a 6 month time limit, at least where the ESOP was negative [OJ 2009, 533]. The applicant must also reply to the ESOP in this same 6 month period under R70(2) EPC [R70a(2) EPC]. The communication under R70(2) EPC is sent to the applicant inviting him to confirm the request for examination he filed on entry into the European phase. It appears that the EPO will also set a 6 month time limit for confirmation of the request for examination under R70(2) EPC [OJ 2009, 533]. The applicant is sent a communication under R161(1) EPC requesting him to correct the deficiencies noted by the EPO in the PCT, to which he must reply because: WO-ISA/IPER/SIS-ISA was negative & the applicant has not already replied The applicant is sent a communication under R161(1) EPC offering him the chance to amend the application, to which he need not reply, because. WO-ISA/IPER/SIS-ISA was positive or the applicant has already replied However, if the applicant replies to the ESOP in this period, this is automatically taken to be the confirmation according to R70(2) EPC [C-VI, 1.1.1, Guidelines 2010 Edition]. 6 months 6 months 1 month 1 month If the applicant does not reply within this, the application is deemed to be withdrawn under R161(1) EPC. Further processing applies. The applicant can reply within the time limit set in this communication, but this is not mandatory [C-VI, 3.5.1, Guidelines 2010 Edition]. If the applicant fails to reply to the ESOP in time, the application is deemed to be withdrawn [R70a(3) EPC]. If the applicant fails to confirm the request for examination in time, the application is deemed to be withdrawn under R70(3) EPC. Further processing applies to both failures. If the applicant fails to confirm the request for examination in time, the application is deemed to be withdrawn under R70(3) EPC. Further processing applies to this failure. * This includes the case where the EPO prepared the IPER, but the ISA was the not the EPO, but rather the office of an EPO state viz: Sweden, Spain, Austria, Finland, the rdic Patent Institute [the EPO will act as IPEA for such applications - OJ 2007, 617, but will still prepare a supplementary search report for them in the European phase B-II, 4.3]. ** This applies where the EPO performed the International search as ISA (B-II, 4.3), or where it performed the SIS-search as SIS-ISA [OJ 2009, 594]. *** This includes the case, where the EPO was the ISA (and so prepared a WO-ISA) and there is preliminary examination, but the EPO was not the IPEA. Remark: this table is provided as annex to the book: P. Watchorn & A. Veronese PCT Procedures and Passage into the European Phase. The references in brackets... refer to the relevant paragraphs of the book. Disclaimer: the authors do not accept any responsibility for the consequences of following the information / tips given in this table. Reference must always be made to the official documents (the PCT, the EPC and their implementing regulations and guidelines).

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